Invention requires conception

U.S. inventorship requires invention and invention requires conception. The USPTO’s revised inventorship guidance states the governing standard in the Federal Circuit’s terms and quotes them for the Office’s examiners and the public:

The Federal Circuit has centered its inventorship inquiry around “conception,” characterizing conception as “the touchstone of inventorship.” 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.” 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.”

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

The same notice continues:

Determining inventorship is highly fact intensive. 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.” Analysis of conception turns on the ability of an inventor to describe an invention with particularity. Absent such a description, an inventor cannot objectively prove possession of a complete mental picture of the invention at a later time.

Id. at 54637 (citations omitted).

That standard is older than generative AI. What has changed is the ease with which tools can produce claim-shaped prose, map white space, and propose limitations that look like an invention. Looking like an invention is not conception.

What the USPTO’s revised inventorship guidance says

The Revised Inventorship Guidance for AI-Assisted Inventions rescinds and replaces the Office’s February 2024 inventorship guidance and states the Office’s current position.

Rescission of the February 2024 approach. The Office states:

The guidance issued on February 13, 2024, titled “Inventorship Guidance for AI-Assisted Inventions” is rescinded in its entirety.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approach set forth in that guidance, which relied on the application of the Pannu factors to AI-assisted inventions, is withdrawn. The Pannu factors only apply when determining whether multiple natural persons qualify as joint inventors. 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.

Id. at 54636 (footnotes omitted).

One inventorship standard. The notice is explicit that AI does not get a special inventorship test:

The same legal standard for determining inventorship applies to all inventions, regardless of whether AI systems were used in the inventive process. There is no separate or modified standard for AI-assisted inventions.

Id.

Only natural persons may be named as inventors. Relying on Thaler v. Vidal, the guidance states:

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. 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.

Id. (footnotes omitted).

For examination practice, the Office directs:

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.

Id. at 54637.

AI systems are tools used by human inventors. Section IV of the notice puts the tool characterization in the Office’s own words:

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. 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.

Id. (footnote omitted).

When more than one natural person is involved, the notice keeps joint inventorship among the humans: traditional principles, including the Pannu factors, apply, and “[t]he fact that AI tools were used in the development process does not change the joint inventorship analysis among the human contributors.” Id.

The practice takeaway for this series follows from these statements: inventorship still turns on human conception; AI remains a tool; landscape and white-space instruments do not rewrite that standard.

AI-assisted drafting is permitted practice

A separate USPTO notice addresses practitioners’ use of AI tools to prepare papers for the Office. That notice should not be collapsed into the inventorship guidance. Inventorship asks who conceived. The practice guidance asks what rules apply when a patent attorney uses AI to draft.

On April 11, 2024, the USPTO published Guidance on Use of Artificial Intelligence-Based Tools in Practice Before the United States Patent and Trademark Office, 89 Fed. Reg. 25609. The notice “does not constitute substantive rulemaking and does not have the force and effect of law,” and it “does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO.” It applies existing rules to AI use. “In the event of any conflict between the February 2024 Guidance and this notice, this notice controls.” 89 Fed. Reg. at 25610. The “February 2024 Guidance” there is the Director’s February 6, 2024 memo to the PTAB and TTAB, not the inventorship guidance. Id.

On drafting itself, the Office is direct:

The capabilities of these tools continue to grow, and there is no prohibition against using these computer tools in drafting documents for submission to the USPTO. Nor is there a general obligation to disclose to the USPTO the use of such tools.

Id. at 25614 (footnote omitted).

The accompanying footnote ties any disclosure duty to materiality under § 1.56(b), not to a categorical “announce your AI” rule. Id. at 25614 n.58. In other words: a patent attorney who uses AI to help draft a specification, claims, Office-action response, or brief is not, by that use alone, violating USPTO practice. Existing duties still apply, and on the Office’s framing those “conditions and obligations readily apply to situations in which the party or practitioner uses AI as a tool.” Id. at 25614.

Those duties are also stated in the notice’s language. Papers drafted with AI assistance still require a human signature and the certifications of 37 CFR 11.18:

[A]ny paper submitted to the USPTO must be reviewed by the party or parties presenting the paper. Those parties are responsible for the contents therein. Simply relying on the accuracy of an AI tool is not a reasonable inquiry. Therefore, if an AI tool is used in drafting or editing a document, the party must still review its contents and ensure the paper is in accordance with the certifications being made.

Id. at 25614 (footnote omitted).

The signature itself must be human. The notice states that it “would not be acceptable for the correspondence to have the signature of an AI tool or other non-natural person,” that “AI systems may not obtain a USPTO.gov account,” and that “practitioners may not sponsor AI tools as a support staff individual to obtain an account.” Id. at 25616. The duty of candor and good faith continues to apply to all dealings with the Office, including disclosure of information material to patentability under § 1.56 — which can, on appropriate facts, include information about AI use (for example, inventorship problems if AI introduced embodiments no named inventor conceived). Id. at 25614–15.

One caution in reading that passage today. The April 2024 notice framed its materiality example around whether each claim had “a significant contribution by a human inventor,” id. at 25614, measured “as described by the Pannu factors,” id. at 25615, and it cross-referenced the February 2024 inventorship guidance for that test. The November 2025 guidance withdrew that approach. When one natural person works with AI, the question is no longer whether that person made a Pannu-style significant contribution; it is whether that person conceived the claimed invention under the traditional standard. 90 Fed. Reg. at 54636–37. The candor and signature framework of the April 2024 notice remains the Office’s statement on AI-assisted drafting; the inventorship test it described does not.

In the patent-specific examples, the notice likewise allows AI assistance while keeping human control on the claim and the IDS:

• Where an AI tool is used to draft patent claims, the practitioner is under a duty to modify those claims as needed to present them in patentable form before submitting them. Where the specification or drawings are drafted using AI tools, practitioners “need to take extra care to verify the technical accuracy of the documents and compliance with 35 U.S.C. 112.” Discussing AI-drafted prophetic examples, the notice adds that the work should be done before initial filing “because amending the specification and/or drawings after the initial submission may constitute new matter.” at 25615. The same logic reaches any AI-drafted disclosure.
• IDS forms may be populated with AI assistance, and AI may collect the references. The person who signs certifies a reasonable inquiry under § 11.18(b) that includes reviewing each listed reference, not merely the form. Submitting an IDS without reviewing its contents may violate § 11.18(b). After review, clearly irrelevant and marginally pertinent cumulative information should be removed; including it “could be construed as a paper presented for an improper purpose.” The Office’s concern is that unchecked AI use could inflate the number and size of IDS submissions and “burden the Office with large numbers of cumulative and irrelevant submissions.” at 25615–16.

So the two USPTO notices work together for this series. The November 2025 inventorship guidance keeps conception with natural persons and treats AI as a tool in the inventive process. The April 2024 practice guidance confirms that patent attorneys may use AI tools to draft and assist with USPTO papers under existing rules — with human review, human signature, and candor intact. Using the instrument for Preexamination drafting assistance is not, standing alone, a violation of USPTO practice. Substituting the instrument for human conception is a different problem, and that is the inventorship problem this post is about.

Human innovation is required; landscape is not conception

Part II described landscape for drafting — context-based search, cononym clusters, functional filtering, and a scope dial that limits context when the net is too broad. That work is prior-art analysis and claim-scope intelligence, not conception.

A landscape campaign can:

• retrieve and read documents;
• surface teachings and functional equivalents;
• show that a stated context is anticipated or crowded;
• identify limitations that clear anticipatory art; and
• describe open room relative to the art then in view.

Landscapes are useful to limit overly broad claiming: to test whether a conceived invention has room, to learn which additional limitations the art requires, and to adapt the application accordingly. When a landscape surfaces a new limitation, take it back to the inventor; if the inventor did not conceive it, it does not belong in the claims as the inventor’s invention. Landscapes are no substitute for conception.

Landscape’s proper role: limit scope; strengthen the asset

Landscape for drafting is primarily a limiting function. When a broad statement of the invention pulls in anticipatory art, limiting the context clears that art and shows what the claims must carry.

Scoping the application to avoid prior art and later invalidity supports:

• prosecution — claims and disclosure already adapted to the constellation of art the Office and a petitioner are likely to find;
• enforceability — a clearer invention description tied to limitations that were chosen against real art, not added under fire; and
• petition readiness — hard art that an IPR or PGR petitioner would use, considered on the applicant’s timeline while the applicant still controls the contents of the application.

AI can assist that analysis. It does not supply the conception the analysis tests. Preexamination is synthetic examination of human conception against the art before filing, followed by human counseling on the final contents and context of the application. The human inventor conceives. The practitioner counsels, crafts, reviews, and signs. The instrument reads the art, aids in drafting, and checks the work. Keep those roles distinct, and the work fits both USPTO notices.