Hunton Retail Law Resource

In February 2024, we posted about the USPTO’s Inventorship Guidance for AI-assisted Inventions and how that guidance might affect a retailer in New USPTO AI-Assisted Invention Guidance Will Affect Retailers and Consumer Goods Companies. With a year now having passed, it is likely you have questions about the guidance.

In mid-January 2025, the USPTO released a series of FAQs relating to this guidance that may answer certain questions. Specifically, there are three questions and responses in the FAQs. The USPTO characterized these FAQs as being issued to “provide additional information for stakeholders and examiners on how inventorship is analyzed, including for artificial intelligence (AI)-assisted inventions.” The USPTO further stated that “[w]e issued the FAQs in response to feedback from stakeholders. The FAQs explain that the guidance does not create a heightened standard for inventorship when technologies like AI are used in the creation of an invention, and the inventorship analysis should focus on the human contribution to the conception of the invention.” The FAQs appear to stem, at least in part, from written comments the USPTO received from the public on the guidance.

The FAQs serve to clarify key issues, including that:

1) there is no heightened standard for inventorship of AI-assisted inventions;

2) examiners do not typically make inquiries into inventorship during patent examination and the guidance does not create any new standards or responsibilities on examiners in this regard; and

3) there is no additional duty to disclose information, beyond what is already mandated by existing rules and policies.

A key statement by the USPTO in the FAQ responses is: “The USPTO will continue to presume that the named inventor(s) in a patent application or patent are the actual inventor(s).”

Regardless of whether the USPTO will (most likely) not make an inventorship inquiry during patent examination, IP counsel should still ensure that appropriate inventorship inquiries are made during the patent application drafting process. A best practice is to maintain all applicable records after drafting to support an inventorship inquiry, which may not come until after a patent issues, such as during litigation.

While the FAQs may not address all questions about the AI inventorship guidance, they are a step towards demonstrating how the USPTO will handle AI related patent issues moving forward.