As readers may recall, in February 2024, the USPTO issued guidance on inventorship in AI-assisted inventions, which we wrote about here. On November 26, 2025, the USPTO rescinded that guidance and replaced it with new guidance.
By way of background, the February 2024 Guidance analyzed the naming of inventors for AI-assisted inventions using the Pannu factors, which state that an inventor must (1) contribute in some significant manner to the conception or reduction to practice of an invention, (2) make a contribution to the claimed invention that is not insignificant in quality when measured against the full invention, and (3) do more than merely explain well-known concepts and/or the current state of the art. In the February 2024 Guidance, the USPTO noted that in the context of AI-assisted inventions, the Pannu factors were informed by the following considerations:
- Use of an AI system in creating an AI-assisted invention does not categorically negate the natural person’s contributions as an inventor, if the natural person “contributes significantly” to the invention
- Providing a recognized problem or a general goal or research plan to an AI system does not rise to the level of conception
- Reduction of the output of an AI system to practice alone is not a significant contribution that rises to the level of inventorship
- A natural person who designs, builds, or trains an AI system in view of a specific problem to generate a particular solution could be an inventor
- Owning or overseeing an AI system used in the creation of an invention does not constitute a significant contribution to conception
The November 2025 Guidance withdraws the analysis of the Pannu factors, indicating that the Pannu factors only apply when determining when multiple natural persons qualify as inventors. The November 2025 Guidance further emphasizes that the same legal standard for determining inventorship applies, whether or not AI systems were used in the inventive process. AI systems are described as tools, analogous to laboratory equipment, computer software, research databases, and the like. And under well-established practice, inventors can use the services of others – including AI systems – without those sources becoming co-inventors.
This Guidance significantly simplifies the analysis of how AI systems can be used in the inventive process. In removing the Pannu factors from the analysis of whether an AI system is an inventor, the November 2025 Guidance allows inventors to extensively use AI systems in developing an invention without needing to consider the extent to which an inventor used an AI system – such as tracking the prompts used by an inventor to prompt an AI system to generate an invention, characterizing the nature of the prompts as describing a general problem, directing an AI system towards a particular solution, or the like.
This change may also reduce the likelihood of AI creators being deemed co-inventors, because they are only considered as tool-builders. For example, in an AI-assisted drug discovery collaboration between AI experts and drug discovery scientists, under the new Guidance, the drug discovery scientists may use the services, ideas, and aid of the AI system without any concern that the AI system or its creators could become co-inventors. However, whether the AI experts are inventors should be assessed.
In short, the November 2025 Guidance reiterates that AI systems themselves cannot be named as an inventor on a patent application or issued patent. This is in line with the Federal Circuit’s decision in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), in which the Federal Circuit held that only natural persons could be listed as inventors on a patent application or issued patent. Thus, past policy involving the rejection of claims under 35 U.S.C. § 101 and 115 for claims in any application in which an AI system is listed as an inventor or joint inventor remains in place. Relatedly, because only natural persons can be listed as inventors on a patent application or an issued patent, priority claims to foreign applications that name an AI tool as a sole inventor will not be accepted, and the ADS for US patent applications should only name natural persons even when claiming priority to a foreign application including natural persons and AI tools as joint inventors.
We would observe that this is an administrative change, subject to recission by subsequent notice and comment. Because this may not be a permanent change, it may still be worth preserving evidence of how inventors use AI systems in the inventive process to defend against future challenges to patent validity.