The Federal government is accelerating AI‑enabled innovation by launching the Genesis Mission, a sweeping national initiative to accelerate scientific discovery using artificial intelligence. The goal of the Mission is to “build an integrated AI platform to harness Federal scientific datasets…to train scientific foundation models and create AI agents to test new hypotheses, automate research workflows, and accelerate scientific breakthroughs.” Under the leadership of the Assistant to the President for Science and Technology, the Department of Energy will implement the Mission.

The new “American Science and Security Platform” will provide “secure access to appropriate datasets, including proprietary, federally curated, and open scientific data sets” along with “applicable classification, privacy, and intellectual property protections.” The Mission also directs the relevant Federal agencies to “establish clear policies for ownership, licensing, trade-secret protections, and commercialization of intellectual property developed under the Mission, including innovations arising from AI-directed experiments.”

Against this backdrop of AI-accelerated R&D, the U.S. Patent and Trademark Office has issued revised examination guidance on inventorship for AI-assisted inventions. This new guidance rescinds the USPTO’s February 2024 guidance and clarifies that 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.” The guidance describes AI systems as “instruments used by human inventors” – “analogous to laboratory equipment, computer software, research databases, or any other tool that assists in the inventive process.”

While AI “systems, regardless of their sophistication, cannot be named as inventors or joint inventors on a patent application as they are not natural persons”, the guidance emphasizes that whether a natural person is an inventor “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.” With respect to joint inventorship among natural persons, the guidance stresses that “the fact that AI tools were used in the development process does not change the joint inventorship analysis among the human contributors.”

The Proskauer Intellectual Property Team is continuing to monitor the evolving guidance on artificial intelligence and other emerging technologies. With the launch of the Genesis Mission and the USPTO clarifying the inventorship of AI-assisted inventions, these parallel developments signal a more supportive environment for AI innovators. As part of your innovation process, we recommend consulting with seasoned patent litigation attorneys to discuss how inventorship issues for AI-assisted inventions may impact the validity and enforceability of issued patents. We welcome questions about how these shifts may affect your patent strategy in the AI and broader emerging technology space.

Photo of Joseph Drayton Joseph Drayton

A first-chair trial lawyer, Joe Drayton has represented some of the nation’s most prominent companies across a wide array of industries in all facets of intellectual property (IP) litigation before both state and federal courts, as well as the International Trade Commission and…

A first-chair trial lawyer, Joe Drayton has represented some of the nation’s most prominent companies across a wide array of industries in all facets of intellectual property (IP) litigation before both state and federal courts, as well as the International Trade Commission and American Arbitration Association.

Joe has more than two decades of experience specializing in both domestic and international intellectual property and complex commercial disputes, including patent, trade secrets, copyright, trademark and trade dress and false advertising across diverse industries. He also counsels clients in all aspects of IP acquisition, transfer, protection and enforcement.

Joe is a trusted advisor for several corporate executives and a national leader in the legal community. He is regularly recognized as one of the top lawyers in the U.S., having consistently been named to the IAM Patent 1000 list. Most recently, Joe received the C. Francis Stadford Award by the National Bar Association, the highest award bestowed by the association that is given to a member whose leadership, integrity, legal skills and devotion have inspired colleagues and contributed greatly to the legal profession. A longtime bar leader, Joe served as the 76th president of the National Bar Association and is also a former vice president and Board chair of the New York City Bar Association.

Photo of Alan S. Teran Alan S. Teran

Alan S. Teran, Ph.D., is an associate in the Litigation Department and Intellectual Property Group.

His practice focuses on a variety of intellectual property issues, including worldwide patent portfolio development, patent prosecution, and due diligence. Alan represents clients before the U.S. Patent and…

Alan S. Teran, Ph.D., is an associate in the Litigation Department and Intellectual Property Group.

His practice focuses on a variety of intellectual property issues, including worldwide patent portfolio development, patent prosecution, and due diligence. Alan represents clients before the U.S. Patent and Trademark Office during all phases of worldwide patent prosecution development, including prior art investigations; preparing design, provisional, and utility applications; filing continuation and divisional applications; leading examiner interviews; and foreign patent strategy.

Alan has experience with a wide range of technologies, including  augmented/virtual reality-based software solutions; material processing operations; control systems; integrated circuits; machine learning-based financial services software; media and mobile technology; medical devices; and semiconductor devices and fabrication.

Alan received his Ph.D. in Electrical Engineering at the University of Michigan, where his research focused on energy harvesting technologies and semiconductor physics for Internet-of-Things and medical applications.