[Federal Register Volume 90, Number 227 (Friday, November 28, 2025)]
[Notices]
[Pages 54636-54637]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2025-21457]
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DEPARTMENT OF COMMERCE
Patent and Trademark Office
[Docket No. PTO-P-2025-0014]
Revised Inventorship Guidance for AI-Assisted Inventions
AGENCY: United States Patent and Trademark Office, Department of
Commerce.
ACTION: Examination guidance.
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SUMMARY: The United States Patent and Trademark Office (USPTO) had
issued inventorship guidance for AI-assisted inventions on February 13,
2024.\1\ The USPTO hereby rescinds the previously published
Inventorship Guidance for AI-Assisted Inventions and replaces it with
the guidance below.
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\1\ Inventorship Guidance for AI-Assisted Inventions, 89 FR
10043 (Feb. 13, 2024).
FOR FURTHER INFORMATION CONTACT: Christian Hannon, Senior Patent
Attorney, at 571-272-7385; or Courtney Stopp, Patent Attorney, at 571-
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270-5559, both with the Office of Policy and International Affairs.
SUPPLEMENTARY INFORMATION:
I. Purpose
This notice provides further guidance on the proper legal standard
for determining inventorship in patent applications for AI-assisted
inventions.
II. Recission of Prior Guidance
The guidance issued on February 13, 2024, titled ``Inventorship
Guidance for AI-Assisted Inventions'' is rescinded in its entirety. The
approach set forth in that guidance, which relied on the application of
the Pannu \2\ factors to AI-assisted inventions, is withdrawn. The
Pannu factors only apply when determining whether multiple natural
persons qualify as joint inventors.\3\ Pannu is inapplicable when only
one natural person is involved in developing an invention with AI
assistance because AI systems are not persons and therefore cannot be
``joint inventors'' so there is no joint inventorship question to
analyze.\4\
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\2\ Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).
\3\ Id.
\4\ See Thaler v. Vidal, 43 F.4th 1207, 1212 (Fed. Cir. 2022)
(holding that only a natural person(s) may be listed as an
inventor(s)).
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III. Governing Legal Standards
The same legal standard for determining inventorship applies to all
inventions, regardless of whether AI systems were used in the inventive
process.\5\ There is no separate or modified standard for AI-assisted
inventions.
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\5\ See 35 U.S.C. 115(b)(2) (2024) (providing the standard for
naming inventorship across all types of utility patent
applications).
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The Federal Circuit has held that AI cannot be named as an inventor
on a patent application (or issued patent) and that only natural
persons can be inventors.\6\ Artificial intelligence systems,
regardless of their sophistication, cannot be named as inventors or
joint inventors on a patent application as they are not natural
persons.\7\
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\6\ Thaler, 43 F.4th at 1212.
\7\ See id.
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The Federal Circuit has centered its inventorship inquiry around
``conception,'' characterizing conception as ``the touchstone of
inventorship.'' \8\ Conception is ``the formation in the mind of the
inventor, of a definite and permanent idea of the complete and
operative invention, as it is hereafter to be applied in practice.''
\9\ Conception is complete when ``the inventor has a specific, settled
idea, a particular solution to the problem at hand, not just a general
goal or research plan.'' \10\
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\8\ Burroughs Wellcome Co. v. Barr Labs., Inc., 40F.3d 1223,
1228 (Fed. Cir. 1994) (citing Sewall v. Walters, 21 F.3d 411, 415
(Fed. Cir. 1994)).
\9\ Id. (citing Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting 1 Robinson on Patents
532 (1890))).
\10\ Id.
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[[Page 54637]]
Determining inventorship is highly fact intensive.\11\ The question
is whether the natural person possessed knowledge of all the
limitations of the claimed invention such that it is so ``clearly
defined in the inventor's mind that only ordinary skill would be
necessary to reduce the invention to practice, without extensive
research or experimentation.'' \12\ Analysis of conception turns on the
ability of an inventor to describe an invention with particularity.\13\
Absent such a description, an inventor cannot objectively prove
possession of a complete mental picture of the invention at a later
time.\14\
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\11\ In re Jolley, 308 F.3d 1317, 1323 (Fed. Cir. 2002).
\12\ Burroughs Wellcome Co., 40 F.3d at 1228 (citing Sewall, 21
F.3d at 415).
\13\ Id.
\14\ Id.
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IV. Inventorship Guidance for AI-Assisted Inventions
Generally, the USPTO presumes those inventors named on the
application data sheet or oath/declaration are the actual inventor or
joint inventors of the application.\15\ A rejection under 35 U.S.C. 101
and 115, or other appropriate action, should be made for all claims in
any application that lists an AI system or other non-natural person as
an inventor or joint inventor.
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\15\ See MPEP 2157; see also MPEP 602.01 (``The inventorship of
a nonprovisional application under 35 U.S.C. 111(a) is the inventor
or joint inventors set forth in the application data sheet in
accordance with [37 CFR] Sec. 1.76 filed before or concurrently
with the inventor's oath or declaration.'').
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AI systems, including generative AI and other computational models,
are instruments used by human inventors. They are analogous to
laboratory equipment, computer software, research databases, or any
other tool that assists in the inventive process. As the case law
establishes, inventors may ``use the services, ideas, and aid of
others'' without those sources becoming co-inventors.\16\ The same
principle applies to AI systems: they may provide services and generate
ideas, but they remain tools used by the human inventor who conceived
the claimed invention. When one natural person is involved in creating
an invention with the assistance of AI, the inquiry is whether that
person conceived the invention under the traditional conception
standard set forth above in Section III.
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\16\ Shatterproof Glass Corp. v. Libby-Owens Ford Co., 758 F.2d
613, 624 (Fed. Cir. 1985) (quoting Hobbs v. United States Atomic
Energy Commission, 451 F.2d 849, 864 (5th Cir. 1971)); see also Hess
v. Advanced Cardiovascular Sys., 106 F.3d 976, 981 (Fed. Cir. 1997)
(quoting O'Reilly v. Morse, 56 U.S. 62, 111 (1853) (``it can make no
difference [. . .] whether [the inventor] derives his information
from books, or from conversation with men skilled in the science.''
[. . .] ``the fact that Morse sought and obtained the necessary
information and counsel from the best sources, and acted upon it,
neither impairs his rights as an inventor, nor detracts from his
merits.'')).
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When multiple natural persons are involved in creating an invention
with AI assistance, the traditional joint inventorship principles
apply, including the Pannu factors to determine whether each person
qualifies as a joint inventor.\17\ Each purported inventor must ``(1)
contribute in some significant manner to the conception or reduction to
practice of the invention, (2) make a contribution to the claimed
invention that is not insignificant in quality, when that contribution
is measured against the dimension of the full invention, and (3) do
more than merely explain to the real inventors well-known concepts and/
or the current state of the art.'' \18\ The fact that AI tools were
used in the development process does not change the joint inventorship
analysis among the human contributors.
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\17\ Pannu, 155 F.3d at 1351.
\18\ Id.
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V. Applicability of This Guidance to Design and Plant Patent
Applications and Patents
35 U.S.C. 171 provides that a patent for a design may be obtained
by ``[w]hoever invents any new, original, and ornamental design for an
article of manufacture'' and that the provisions related to utility
patents are applicable to design patents, except as otherwise provided
(e.g., in 35 U.S.C. 172-173).\19\ The Federal Circuit has interpreted
35 U.S.C. 171 such that the inventorship inquiry is the same for a
design patent and a utility patent.\20\
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\19\ 35 U.S.C. 171 (2024).
\20\ Hoop v. Hoop, 279 F.3d 1004, 1007 (Fed. Cir. 2002) (``We
apply the same standard of inventorship to design patents that we
require for utility patents.'') (citing In re Rousso, 222 F.2d 729,
731 (CCPA 1955)).
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35 U.S.C. 161 provides that a plant patent may be obtained by
``[w]hoever invents or discovers and asexually reproduces'' a distinct
and new variety of plant.\21\ 35 U.S.C. 161 limits patent protection to
plants ``that were created as a result of plant breeding or other
agricultural and horticultural efforts and that were created by the
inventor'' (emphasis in original).\22\ That is, to be entitled to
patent protection, the inventor of a plant must have contributed to the
creation of the plant in addition to having appreciated its uniqueness
and asexually reproduced it.\23\ This is true for new and distinct
plant varieties invented with the assistance of AI.
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\21\ 35 U.S.C. 161 (2024).
\22\ In re Beineke, 690 F.3d 1344, 1352 (Fed. Cir. 2012).
\23\ Id. at 1348.
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Therefore, this guidance regarding AI-assisted inventions applies
not only to utility patents and patent applications but also to design
and plant patents and patent applications.
VI. Benefit/Priority Claims to Prior-Filed Applications
Applications and patents claiming the benefit of, or priority to, a
prior application filed in the United States or a foreign country under
35 U.S.C. 119, 120, 121, 365, or 386 must name the same inventor or
have at least one joint inventor in common with the prior-filed
application.\24\ For all applications and patents, including those that
cover AI-assisted inventions, the prior-filed application and the
United States application or patent claiming the benefit of, or
priority to, the prior-filed application must name the same natural
person as the inventor, or have at least one joint inventor who is a
natural person in common. Therefore, a priority claim to a foreign
application that names an AI tool as the sole inventor will not be
accepted. This policy also applies to U.S. patent applications and
patents claiming priority to foreign applications that allow the naming
of non-natural persons as joint inventors. For a U.S. application
claiming priority to a foreign application that names both a natural
person(s) and a non-natural person as a joint inventor, the application
data sheet accompanying the application filed in the United States must
list only the natural person(s) identified as the inventor(s),
including one in common with the foreign application. Similarly, for an
application entering the national stage under 35 U.S.C. 371 where the
international application indicates a joint inventor that is not a
natural person, applicants can comply with the U.S. inventorship
requirement by naming the natural person(s) identified as the
inventor(s) in an application data sheet accompanying the initial
submission under 35 U.S.C. 371.\25\
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\24\ See MPEP 213.02 (subsection II), 211.01, 1895, 2920.05(e).
\25\ See 37 CFR 1.76; MPEP 1893.01(e).
John A. Squires,
Under Secretary of Commerce for Intellectual Property and Director of
the United States Patent and Trademark Office.
[FR Doc. 2025-21457 Filed 11-26-25; 8:45 am]
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