This article discusses potential pitfalls of using artificial intelligence (AI) when creating an invention.

1. Summary

The U.S. Patent and Trademark Office (USPTO) position is that AI, including generative AI, can be used in the inventive process just like any other tool available to human inventors. Per USPTO guidance, using AI does not change how inventorship is determined.

Only humans can be inventors on patent applications. If AI conceived an invention, the invention is not patentable.

Previous USPTO guidance essentially held that AI must be evaluated as if AI were a co-inventor. Current USPTO guidance is that AI is a tool like any other tool an inventor uses.

As the courts are not bound by the USPTO guidance on inventorship, there is some risk in using the USPTO guidance. The USPTO guidance should allow patents to be obtained from the USPTO but a judge or jury could take a different position on using AI in the inventive process.

2. Inventorship in General

An inventor is a human who conceived of the invention. MPEP 2109(II) states:

The definition for inventorship can be simply stated: "The threshold question in determining inventorship is who conceived the invention. Unless a person contributes to the conception of the invention, he is not an inventor"

In a patent application, each inventor must be a human. MPEP 2109(VII) states:

The inventor or joint inventors named on a patent or patent application must be a natural person, i.e., a human being.

The invention must be conceived by a human. MPEP 2138.04 states:

Conception has been defined as "the complete performance of the mental part of the inventive act" and it is "the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice...."

To be joint inventors in a patent application, each inventor must contribute some matter to at least one claim in the patent application. In other words, each inventor must be able to point to something in the claims they contributed. MPEP 2109.01 states:

A joint inventor or coinventor need not make a contribution to every claim of a patent; a contribution to one claim is enough.

3. Inventorship with AI

To obtain a patent, the inventor(s) must be human. In the "Revised Inventorship Guidance for AI-Assisted Inventions" guidance dated November 28, 2026, the USPTO states that human inventors may use AI as a tool but the human must conceive of the invention.

The guidance states that using AI does not change the inventorship analysis:

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.

A human must conceive of the invention. The guidance defines conception as:

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."

The guidance states that AI is a tool for a human inventor to use:

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.[16] 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 ...

The guidance includes that even if a foreign country allows AI inventors, any patent application filed in the US cannot have an AI inventor.

4. Fictitious Examples of Using AI During Inventive Process

The following are fictitious examples about inventorship created by Stellar Patent^®.

Both examples are of a dog owner dealing with a problem of a dog leash becoming tangled around the dog.

Example One:

A dog owner conceives a mechanical device using swivels and tensioners to stop the dog from getting tangled. The dog owner then uses AI to help design the prototype.

The dog owner is an inventor, and the mechanical device is patent eligible.

Example Two:

The dog owner asks AI how to solve the issue of the dog becoming tangled in the dog leash, and the AI generates a mechanical device to solve the leash tangling problem.

The mechanical device is not patentable because it was created by AI and not by the dog owner.

5. Previous Guidance

The previous USPTO guidance "Inventorship guidance for AI-assisted inventions" dated March 5, 2024 essentially analyzed AI from the lens of if AI was a co-inventor. The previous USPTO guidance depended on the Pannu factors which are four factors to determine if someone is a co-inventor for an invention. If AI was a co-inventor, the invention was not patentable. If AI was not a co-inventor, the invention was patentable. The new USPTO guidance rescinds the previous guidance and treats AI as a tool used by human inventors.

As USPTO policies tend to change with the director of the USPTO and court cases, the use of AI in patenting may change in the future.

6. Courts Are Not Required to Follow USPTO Guidance

As the courts are not bound by the USPTO guidance on inventorship, there is some risk in using the USPTO guidance. The USPTO guidance should obtain a patent, but a judge or jury could later take a different position.