Patent Office Scraps Prior AI-Assisted Inventorship Guidance with New Guidance

The US Patent and Trademark Office rescinded and replaced previous guidance for examining patent applications for AI-assisted inventions, calling the previous framework inapplicable.

The 2024 guidance incorrectly applied factors used to assess joint inventorship for considering AI-assisted inventions and is inapplicable because AI systems can’t be inventors, the Patent Office said in a  that was scheduled to publish in the Federal Register Nov. 28. The new guidance says the same legal standard for inventorship should apply whether or not AI was used in the process.

The new guidance underscores longstanding precedent that the same legal standard for determining inventorship applies to all inventions, regardless of whether AI systems were used in the inventive process. No new, separate or modified standard is created for or applies to AI-assisted inventions. The factors mentioned in the previous guidance are inapplicable because AI systems are not persons, and therefore, cannot be joint inventors.

The Patent Office presumes that the inventors named on the application data sheet or oath/declaration are the actual, human-being inventors.  AI systems, including generative AI and other computational models, are tools used by human inventors.  Like any tool, while AI systems may assist inventors, such tools do not qualify for or elevate such assistance to inventor status.

The new guidance applies to design and plant patent inventions as well. Accordingly,

• The same inventorship standard applies to all applications, regardless of whether AI tools were used.
• AI is treated as a tool, like any other software or equipment used in the inventive process.
• Inventors submitted in a patent application are presumed correct; examiners should not apply special scrutiny merely because AI was part of the workflow.
• The guidance applies to utility, design, and plant applications.

Practice Tips for Patent Drafters

1. Avoid Describing AI as the “Decision-Maker”

Ensure descriptions do not imply that AI autonomously conceived claim limitations. Use language such as:

2. Build a Strong Conception Narrative

When drafting the specification, establish a clear narrative of how human insight guided problem-solving or how AI-generated outputs were selected, modified, or rejected by inventors.

3. Train Inventors on How to Discuss AI Use

Instruct inventors how to view the use of AI tools as not affecting inventorship, similar to any other tool an inventor might use to create an invention.

Practice Tips for Patent Litigators

1. Expect AI Use to Become a Discovery Issue

Assume opposing parties will pursue discovery of: AI model logs; validation/test outputs; and internal records regarding AI’s role. Prepare clients early on what AI-related documents exist and how to categorize them.

2. Use the Patent Office’s New Position as a Shield Against Improper Challenges

Because the Patent Office has expressly stated that no modified inventorship standard applies to AI-assisted inventions, litigators can argue:

• That defendants cannot impose heightened inventorship scrutiny; and/or
• That using AI is no different than using standard computational tools.

3. Evaluate Whether Opposing Parties Improperly Minimized Human Contribution

Opponents might overstate AI involvement to challenge inventorship or validity.
Litigators should:

• Examine internal documents for evidence of human conception; and/or
• Depose inventors strategically to highlight human contributions or lack thereof, such as direction, review, selection, and modification of AI outputs.

4. Prepare for Enhanced Enablement and Written Description Challenges

Litigators should review the record regarding how human inventors verified, understood, and/or integrated AI-generated results. Because AI-assisted development may produce complex or non-intuitive outputs, adversaries may argue that the inventor:

• Did not truly understand what was conceived; and/or
• Failed to provide adequate written description or enablement.

5. Consider AI Use in Inequitable-Conduct Theories

Litigators should develop strategies showing that AI tools functioned like any other software and did not create a duty of disclosure because the use of AI was not material to patentability or that sufficient information was disclosed how AI was used in developing the invention. Litigators should prepare for potential claims that:

• AI tools uncovered prior art the inventor should have disclosed;
• AI-generated analyses were withheld.

is a partner in Manatt, Phelps and Phillip’s Intellectual Property Protection and Enforcement business unit and is the author of Patent Prosecution: Law, Practice, and Procedure, 2025 Edition, and Constructing and Deconstructing Patents (2d Edition).

Revised Inventorship Guidance for AI- Assisted Inventions, 90 Fed. Reg. 54636 (November 28, 2025).