posted 4 months ago
The previous guidance from February, 2024 was fairly clear. To be an inventor, a person has to make a significant contribution. The result was not controversial, and we were looking to get more examples about what was “significant.”
The new guidance released November 28, 2025 rescinds the previous guidance (i.e., a significant contribution is not required) and asserts that AI is just a tool “analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process.”
Having rescinded the requirement of a human making a significant contribution, and declaring that AI is “just a tool,” the new guidance seems to promote having people assert that they conceived of inventive features that are AI-generated.
Before accepting this guidance at face value, consider at least four points:
1) The USPTO is bound by statutes and court decisions. Any guidance that is inconsistent with patent statutes or court decisions is not binding.
2) As the guidance point out, the USPTO presumes the named inventors are correct. Evaluating inventorship will likely occur only in court proceedings (e.g., patent litigation), so the USPTO guidance will have no weight.
3) To the extent the new guidance suggests that a person can claim inventorship rights for features the person did not conceive himself/herself, it is contrary to law. Each inventor must sign a declaration that he/she is the actual inventor.
4) The new guidance is inconsistent with copyright law. The copyright office has explicitly stated that AI output cannot be copyrighted, even if it required substantial work by a person to create the desired prompt.
Therefore, as a practical matter, applicants should continue with inventive processes where humans make significant contributions. By keeping the people in the inventive process and creating internal documents to memorialize the human contributions, applicants will be prepared if inventorship is questioned later in litigation.
For more information about SankerIP or to request a free initial consultation, check out our website at https://sankerip.com or message me on LinkedIn.
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posted 13 hours ago
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