USPTO’s 2025 Guidance for AI-Assisted Invention is Not a Full 'Greenlight'
It might even be a speed trap
While the USPTO’s rescission of the 2024 AI Guidance has been welcomed as a simplification of the inventorship inquiry, patent practitioners should resist the urge to view this as an “anything goes” policy for AI-assisted inventing. While the Office has dismantled the complex “significant contribution” test for sole inventors, it shifts the danger zone to a potentially more stubborn obstacle: conception.
The 2025 Guidance clarifies that AI is a tool—like a camera, a microscope, or a CAD program. This is good news. It aligns the patent rules with the practical reality of how engineers work. However, inventors and patent professionals should be wary of treating it as a blanket amnesty for AI use.
For in-house counsel and practitioners, the focus should shift from “How much did the human do?” (2024 Guidance) to “What exactly did the human have in their mind, and when?”(2025 Guidance).
The Rules of Engagement: 2024 vs. 2025
Inventorship is a strict legal determination, not merely a casual attribution of credit akin to academic authorship.
Misrepresenting the true origin of an idea—even inadvertently—can have serious consequences, potentially killing an application or rendering a valuable patent unenforceable years later.
Furthermore, failing to accurately disclose the role of AI can trigger potential ethics violations at the USPTO.
To understand the shift in risk under the new rules, one must contrast the mechanical “contribution” test of the past with the mental “conception” test of the present.
The Rescinded 2024 Framework (The “Significant Contribution” Test)
The 2024 Guidance operated on a granular, claim-by-claim audit. It applied the Pannu factors—originally designed for joint inventorship disputes between humans—to the human-AI relationship.
The rule was strict: a natural person must have made a “significant contribution” to every single claim. If an AI system generated a specific limitation (such as a complex chemical structure or code segment) and the human merely prompted it, the claim risked rejection for lack of human inventorship.
The focus was on the quantity and significance of the human’s input relative to the machine’s output.
The 2025 Framework (The “Conception” Test)
The 2025 Guidance sweeps away the Pannu analysis for single inventors, designating conception as “the touchstone of inventorship.” However, this return to first principles imposes a rigorous mental burden on the inventor.
The guidance defines the boundaries of conception through four critical prongs (2025 Guidance, pp. 2-3).:
Definite and Permanent: Conception requires “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.”
Specific Solution vs. General Goal: Conception is only 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.”
Ordinary Skill Threshold: The inquiry asks 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.”
Proof of Possession: Finally, the analysis of conception turns on the “ability of an inventor to describe an invention with particularity.” The guidance explicitly warns that “Absent such a description, an inventor cannot objectively prove possession of a complete mental picture of the invention at a later time.”
Scenarios in Practice
To illustrate where the new lines are drawn, consider three scenarios involving inventors—Dr. Ares, Dr. Boris, Dr. Canus, and Dr. Davis—working on a new polymer for battery casings.
Scenario 1: The Architect (Safe Under Both Guidelines)
The Hypothetical Fact Pattern: Dr. Ares hypothesizes that adding a specific percentage of graphene oxide to a standard polymer mix will increase heat resistance. He prompts his AI research assistant: “Simulate the thermal conductivity of a polymer blend with 0.5%, 1.0%, and 1.5% graphene oxide, and suggest the optimal curing temperature for each.” The AI runs the simulations and outputs data showing 1.2% is the peak efficiency at 150°C. Dr. Ares reviews the data, confirms it aligns with his theory, and files a patent claiming the specific mixture and curing process.
2024 Guidance Analysis: Likely Eligible. Dr. Ares made a “significant contribution.” He defined the specific components (polymer + graphene oxide) and the variable parameters (percentage + curing temp). The AI merely executed the calculations (reduction to practice). Under Pannu, his contribution to the conception is clearly significant relative to the whole.
2025 Guidance Analysis: Eligible. Dr. Ares conceived the specific solution (the mixture) and used the AI as a calculation tool to verify the specifics. He possessed the “definite and permanent idea” of the invention; the AI simply helped confirm it.
Scenario 2: The Director (The “Pannu” Edge Case)
The Hypothetical Fact Pattern: Dr. Boris knows he needs a battery casing with a non-standard geometric structure to fit a new chassis, but he cannot visualize the complex internal lattice needed to support the weight. He prompts the AI: “Design a battery casing geometry that fits within Dimensions X, Y, Z and supports 50kg of load using the minimum amount of material.”
The AI generates a complex, fractal-like internal lattice structure that Dr. Boris could never have calculated or drawn by hand. He adopts this specific structure and claims it.
2024 Guidance Analysis: Likely Ineligible. Under the rescinded guidance, the USPTO would apply the Pannu factors. The AI generated the specific structure—the “meat” of the claim. An examiner could argue Dr. Boris did not make a “significant contribution” to the specific claim limitations (the fractal lattice) because that feature originated entirely from the AI. His contribution was merely the problem (load/dimensions), while the AI provided the solution.
2025 Guidance Analysis: Likely Eligible. With Pannu out of the picture, the AI is treated as a sophisticated CAD tool. Just as an architect is the inventor of a building even if their software calculated the necessary beam thickness, Dr. Boris is the inventor of the casing. He conceived the complete invention (the casing with specific constraints) and used the tool to generate the specific embodiment. Provided he reviews and mentally possesses the final design as his own “settled idea” before filing, he is the sole inventor. The tool’s complexity does not negate his conception.
Scenario 3: The Passive Recipient (Ineligible Under Both)
The Hypothetical Fact Pattern: Dr. Canus is unsure what to research next. He prompts the AI: “Analyze current trends in battery technology and propose a novel patentable invention that solves a major efficiency bottleneck.” The AI suggests a new electrolyte composition based on a lithium-sulfur variant that Dr. Canus had not previously considered. He thinks it looks promising and files a patent application for the composition exactly as output by the AI.
2024 Guidance Analysis: Ineligible. Dr. Canus failed to contribute significantly. He provided a “general goal” (find an invention), which the 2024 guidance explicitly cited as insufficient.
2025 Guidance Analysis: Ineligible. Despite the friendlier standard, Dr. Canus fails the “conception” test. The 2025 Guidance (p. 2) reiterates that “conception is complete when the inventor has a specific, settled idea... not just a general goal.” Since the specific idea originated from the AI and Dr. Canus merely recognized it, he did not “conceive” the invention in his mind. He cannot retroactively claim conception of an idea presented to him by a tool.
Bonus Scenario: The Toolmaker (Likely Need More Facts…)
The Hypothetical Fact Pattern: Dr. Davis spends six months explicitly coding and training a specialized AI model (”PolyGen-D”) on a proprietary dataset of failed experiments to solve a difficult protein folding problem for the battery casing’s insulation layer.
He does not know what the final protein structure will look like, but—as an AI expert—he meticulously builds the “machine” that will find it. Upon running PolyGen-D, the AI outputs a novel, non-obvious protein structure that Dr. Davis never specifically envisioned.
2024 Guidance Analysis: Potentially Eligible. The 2024 guidance explicitly stated that “designing, building, or training an AI system in view of a specific problem to elicit a particular solution could be an inventor.” Because Dr. Davis made a “significant contribution” to the creation of the invention by building the specialized tool that made it possible, he potentially satisfies the Pannu factors. His contribution to the means of invention was significant enough to credit him with the result.
2025 Guidance Analysis: Likely Ineligible. Under the strict “conception” standard, Dr. Davis could be in trouble. While he built the tool, he did not have a “definite and permanent idea” of the specific protein structure until the AI produced it. The 2025 guidance views the AI as a tool, akin to a telescope. Galileo invented the telescope, but he did not “invent” Jupiter’s moons—he merely discovered them. Similarly, Dr. Davis invented the process (the AI), but he did not conceive the product (the protein). We probably need more facts, but that sounds more like a research plan than a particular solution to a problem at hand.
If he lacked mental possession of the specific structure before the AI revealed it, he likely cannot claim inventorship of the protein itself. The deciding factor may rest on how much “mental possession” Davis had of the properties of the protein versus its structure.
Analysis: The Risks of “Tool” Reliance
While the “AI as a tool” analogy simplifies the filing process, it introduces a subtle litigation risk regarding possession.
If an inventor relies too heavily on AI to generate the details (as in Scenario 2), a challenger in court might argue that the inventor never truly “conceived” the invention in its full scope. If the AI generated the fractal lattice, did Dr. Boris actually understand and possess that specific structure, or did he just cut-and-paste the file?
The risk is that while the USPTO may grant the patent under the 2025 guidelines, a district court—looking at discovery showing the inventor couldn’t explain how the structure works—might find a lack of true conception.
Attorneys should ensure inventors can explain the “why” and “how” of their AI-generated features to demonstrate genuine mental possession of the invention.
Strategic Takeaways: A New Due Diligence
The 2025 guidance is not a license to patent AI outputs blindly. It replaces an administrative hurdle (proving contribution under Pannu) with an existential one (proving conception under Burroughs Wellcome).
For patent practitioners, this likely requires a fundamental adjustment in how invention disclosures are vetted. The inquiry must shift from auditing the process of creation to auditing the inventor’s mental possession of the result.
The “Do You Understand?” Test
A key inquiry for inventors using AI tools is no longer “How did you make this?” but “Do you understand this?”
Patent attorneys should rigorously test inventors during the disclosure interview. If an inventor cannot explain the structure or operation of the invention without referencing the AI’s output text, they likely lack the requisite conception.
The guidance requires the “formation in the mind of the inventor of a definite and permanent idea” (2025, p. 2). A practitioner who files an application for a client who cannot describe the invention with particularity is effectively filing on a “black box,” leaving the patent vulnerable to invalidation for lack of true inventorship.
Reviving the Inventor’s Notebook
The humble lab notebook could be poised for a renaissance as a critical evidentiary shield. In the era of generative AI-assisted research, a bound, chronological hand-written record can help demonstrate, e.g., the “ability of an inventor to describe an invention with particularity” (2025, p. 3).
These contemporaneous records do more than establish priority (e.g., for us pre-AIA practitioners); they can evidence “particular solution to the problem at hand” and “not just a general goal or research plan” (2025, p. 2).
Should a patent’s validity be challenged on the grounds that an AI generated the core innovation, a detailed notebook can provide the necessary evidence of true conception.
Good notebook practices include:
Ink Only: Keep a written record of all ideas and experiments in ink.
Permanence: Keep all records in bound notebooks with all pages numbered permanently in ink; keep lab notebooks intact and free from mutilation.
Contemporaneous: Record all experiments contemporaneously with the performance of the actual events.
Witnessing: If the notebook entry records the conception of an idea, both the inventor and witnesses should sign and date the notebook entry and indicate that the witness has read and understood what has been written.
The Duty of Disclosure
While the 2025 guidance removes the need to parse the “significance” of every prompt, the duty of candor remains absolute. Practitioners must ensure the named inventor truly “conceived” the subject matter.
Under 37 C.F.R. 11.18(b)(2), legal contentions must be “formed after an inquiry reasonable under the circumstances.” Furthermore, the statute mandates that “The allegations and other factual contentions have evidentiary support.”
If an AI delivers a complex chemical formula that the “inventor” simply accepts without understanding, listing them as the inventor may constitute a violation of the duty of disclosure or fraud on the Office.
One “reasonable inquiry” required under 37 C.F.R. 11.18 may be asking an uncomfortable question: “Did you actually conceive this, or did you just copy it from ChatGPT?”
Conclusion
The 2025 Guidance is a procedural win that removes the awkward “significant contribution” audit for AI-assisted inventors. It allows inventors to use AI as a powerful instrument without fear of failing a joint-inventorship test. However, the requirement for human conception remains absolute.
Inventorship is a strict legal determination, not merely a casual attribution of credit akin to academic authorship. Misrepresenting the true origin of an idea—even inadvertently—can have serious consequences, potentially rendering a valuable patent unenforceable.
Practitioners should advise clients that using AI to optimize or flesh out an idea is generally safe, but using AI to source the idea itself remains a fatal flaw.
The human mind must still be the origin of the “definite and permanent idea,” no matter how advanced the tool used to express it.
Disclaimer: This is provided for informational purposes only and does not constitute legal or financial advice. To the extent there are any opinions in this article, they are the author’s alone and do not represent the beliefs of his firm or clients. The strategies expressed are purely speculation based on publicly available information. The information expressed is subject to change at any time and should be checked for completeness, accuracy and current applicability. For advice, consult a suitably licensed attorney and/or patent professional.