USPTO Director Squires clarifies human inventors can use AI like any other tool; but under Federal Circuit case law, AI can’t be named as inventor

Context: In recent years, patent offices and courts have had to make many case-specific decisions, and patent offices have published guidelines, concerning AI inventorship. That is separate from patent-eligibility questions surrounding AI, which is not our topic here. Under the Biden Administration, the United States Patent & Trademark Office (USPTO) issued inventorship guidance for AI-assisted inventions on February 13, 2024.

What’s new: Today, USPTO Director John A. Squires published a document entitled “Revised Inventorship Guidance for AI-Assisted Inventions” (PDF). It updates the USPTO’s examination guidelines by rescinding the above-mentioned prior AI guidance and replacing it with new rules:

• The Pannu factors (named after the 1998 Federal Circuit decision in Pannu v. Iolab Corp.) concerning an inventor’s contributions apply only to human inventors.
• AI is treated as a tool used by humans.
• In accordance with the Federal Circuit’s 2022 Thaler v. Vidal decision, AI cannot be named as an inventor. Only natural persons can be named as inventors. But under the new guidance, they can use AI as a tool like any other. The new USPTO guidelines compare this to “laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process.”
• Thaler effectively serves as a filter for the Pannu analysis: AI is just considered a tool, and the Pannu analysis is limited to human co-inventors. “The fact that AI tools were used in the development process does not change the joint inventorship analysis among the human contributors,” the guidance says.
• This is not limited to utility patents, but equally applicable to design and plant patents and the related applications.
• If foreign jurisdictions allow the naming of non-human inventors such as AI systems, claiming priority to such foreign applications in the U.S. is possibly only if there is at least one human inventor that can be named on the U.S. application (“have at least one joint inventor who is a natural person in common”).

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