Trump Administration’s Initial Steps On AI and IP Policy

In its opening week, the Trump administration issued a pair of executive orders (“EO”) that may lead to a rescission or suspension of recent AI-related guidance and initiatives carried out by the U.S. Patent and Trademark Office (“USPTO”) under the outgoing Biden administration.

On January 20, the Trump administration issued an executive order (“Rescission EO”)¹ revoking many of the outgoing Biden administration’s EOs, including EO 14110 of October 30, 2023 (“Safe, Secure, and Trustworthy Development and Use of Artificial Intelligence”).² This revocation was followed days later, on January 23, 2025, by another EO, “Removing Barriers to American Leadership in Artificial Intelligence” (“Trump AI EO”), which states that: “It is the policy of the United States to sustain and enhance America’s global AI dominance in order to promote human flourishing, economic competitiveness, and national security.”³ The Trump AI EO provides that within 180 days, members of his administration must submit an action plan to achieve the stated policy.⁴ In the meantime, the Trump AI EO calls for an immediate review of “all policies, directives, regulations, orders, and other actions taken under” EO 14110 to consider whether to “suspend, revise, or rescind such actions” if inconsistent with the stated policy.⁵

The Biden’s administration’s EO 14110, section 5.2(c), ordered the USPTO to: (i) publish guidance on inventorship issues raised by AI within 120 days; (ii) publish guidance on patent eligibility issues raised by AI; and (iii) consult with the US Copyright office on recommended future EOs relating to copyright within 180 days after the US Copyright Office publishes its AI study.⁶

In the past year, the USPTO has carried out EO 14110’s directives:

1. On February 12, 2024, the USPTO published “Inventorship Guidance for AI-Assisted Inventions.”⁷ The guidance confirmed the Federal Circuit’s holding in Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022), that only humans can be named inventors on patents, while AI cannot.⁸ But the guidance did not preclude AI from assisting in the invention process; rather, AI-assisted inventions are patent-eligible so long as a human makes a “significant contribution” to the invention process.⁹ To evaluate whether this “significant contribution” standard is met, the USPTO proposed looking to the “Pannu factors” that had previously been used to evaluate joint inventorship between two or more humans.¹⁰
2. On April 30, 2024, the USPTO published a request for comments (“RFC”) on the impact of AI on prior art, the knowledge of a person of ordinary skill, and determinations of patentability.¹¹ The RFC sought feedback on questions such as: (1) whether AI-generated work could be used as prior art; (2) whether and how the standard for a person of ordinary skill and the knowledge of such a person should be adjusted in view of AI; and (3) the impact of AI on patentability issues, such as obviousness, written description, and indefiniteness.¹² Based on feedback to the RFC, the USPTO was expected to issue guidance later this year in 2025.
3. On July 16, 2024, the USPTO published a “2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence.”¹³ The guidance provided that inventions directed to AI technologies can be patent-eligible under 35 U.S.C. § 101 and the Supreme Court’s decision, Alice Corp. v. CLS Bank Int’l 573 U.S. 208 (2014), under certain circumstances.¹⁴ It also elaborated on the application of the USPTO’s three-part analysis (i.e., with Step 1, Step 2A, and Step 2B) to AI-related patents and claims.¹⁵ The guidance identified patents directed to “mathematical concepts,” “certain methods of organizing human activity,” and mental processes” as posing greater risk of patent ineligibility.¹⁶ The guidance was accompanied by three hypothetical examples of AI-related patents to which the three-part test was applied.¹⁷
4. On July 31, 2024, the USPTO acknowledged that the US Copyright Office had published “Part 1” of its AI study addressing “Digital Replicas,” such as “deepfake” videos, images, and audio recordings created using generative AI.¹⁸ The USPTO also acknowledged that, under EO 14110 and in view of the study, it would submit “copyright-related recommendations to the president within 180 days,” which would have been January 27, 2025.¹⁹ At this time, the USPTO has not submitted any such recommendations on copyright issues.
5. On January 14, 2025, while not required by EO 14110, the USPTO published an “AI Strategy” that sets forth future goals and actions for the USPTO to develop IP policies that “promote inclusive AI innovation and creativity” and also to further investment in AI infrastructure, use, and expertise within the USPTO.²⁰

Because EO 14110 has now been revoked and the USPTO’s actions this past year were, at least in part, carried out under that EO, it remains to be seen whether they will be rescinded or suspended. Under the Trump AI EO, the USPTO’s prior actions will be reviewed by: the Director of Science and Technology (Michael Kratsios has been nominated); the Special Advisor for AI and Crypto (David Sacks); and the National Security Advisor (Michael Waltz). This group is likely to consult with the USPTO Director (currently vacant, with former O’Melveny attorney, Coke Stewart, sitting as the acting director).²¹

It is difficult to predict the fate of the USPTO’s recent guidance and actions. Although the first Trump administration issued an EO on AI in 2019, the EO did not provide any express directives for the USPTO or on IP or patent policy.²² The tenor of the Trump AI EO appears to favor an eventual rescission or substantial revision of the USPTO’s recent actions.

But it is possible that the USPTO’s guidance on inventorship and § 101 will remain intact or not be substantially revised. First, both largely follow caselaw set by appellate courts, such as the Thaler Federal Circuit decision on inventorship or the Alice Supreme Court decision on patent-eligibility. Second, the USPTO’s § 101 guidance simply applied to the context of AI its existing three-part analysis, which the USPTO established in 2014 and went unchanged through the first Trump administration.²³ Third, the Trump AI EO’s stated goal is to promote development of AI technologies while avoiding “ideological bias or engineered social agendas.”²⁴ Neither the USPTO’s inventorship nor § 101 guidance appear directly at odds with that stated goal. Fourth, while the USPTO’s recent actions were pursuant to EO 14110, they were also partially the byproduct of USPTO AI initiatives started before that EO and were authorized by Congress under 35 U.S.C. § 2(b).²⁵

On the other hand, it is more likely that the USPTO’s remaining work under EO 14110—including (1) publishing guidance on prior art, the person of ordinary skill standard, and patentability; (2) issuing recommendations on copyright law in consultation with the US Copyright Office; and (3) carrying out its January 2025 AI Strategy—will be suspended or at least delayed pending further guidance from the new administration or future USPTO Director.²⁶ As noted, the Trump AI EO called for an action plan on AI within the next six months and it is anticipated that a new USPTO Director will be appointed later this year.

O’Melveny will continue to monitor and provide updates on AI policies and initiatives from the Trump administration’s and USPTO.

¹ Executive Order No. 14148 (90 Fed. Reg. 8237), https://www.whitehouse.gov/presidential-actions/2025/01/initial-rescissions-of-harmful-executive-orders-and-actions/ (January 20, 2025).

² Executive Order No. 14110 (88 Fed. Reg. 75191), https://www.federalregister.gov/documents/2023/11/01/2023-24283/safe-secure-and-trustworthy-development-and-use-of-artificial-intelligence (October 30, 2023).

³ Trump AI EO, https://www.whitehouse.gov/presidential-actions/2025/01/removing-barriers-to-american-leadership-in-artificial-intelligence/ (January 23, 2025).

⁴ Id.

⁵ Id.

⁶ EO 14110, § 5.2(c).

⁷ Inventorship Guidance for AI-Assisted Inventions, 2024-02623 (89 Fed. Reg. 10043), https://www.federalregister.gov/documents/2024/02/13/2024-02623/inventorship-guidance-for-ai-assisted-inventions (February 12, 2024).

⁸ Id.

⁹ Id.

¹⁰ Id.; see also Pannu v. Iolab Corp., 155 F.3d 1344, 1351 (Fed. Cir. 1998).

¹¹ Request for Comments Regarding the Impact of the Proliferation of Artificial Intelligence on Prior Art, the Knowledge of a Person Having Ordinary Skill in the Art, and Determinations of Patentability Made in View of the Foregoing, 2024-08969 (89 Fed. Reg. 34217), https://www.federalregister.gov/documents/2024/04/30/2024-08969/request-for-comments-regarding-the-impact-of-the-proliferation-of-artificial-intelligence-on-prior (Apr. 30, 2024).

¹² Id.

¹³ 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence, 2024-15377 (89 Fed. Reg. 58128), https://www.federalregister.gov/documents/2024/07/17/2024-15377/2024-guidance-update-on-patent-subject-matter-eligibility-including-on-artificial-intelligence (July 16, 2024).

¹⁴ Id.

¹⁵ Id.

¹⁶ Id.

¹⁷ https://www.uspto.gov/sites/default/files/documents/2024-AI-SMEUpdateExamples47-49.pdf.

¹⁸ USPTO, Press Release 24-15, https://www.uspto.gov/about-us/news-updates/uspto-welcomes-us-copyright-office-report-digital-replicas (July 31, 2024); US Copyright Office, Copyright and Artificial Intelligence, Part 1: Digital Replicas https://copyright.gov/ai/Copyright-and-Artificial-Intelligence-Part-1-Digital-Replicas-Report.pdf (July 2024).

¹⁹ USPTO, Press Release 24-15, https://www.uspto.gov/about-us/news-updates/uspto-welcomes-us-copyright-office-report-digital-replicas (July 31, 2024).

²⁰ USPTO, Artificial Intelligence Strategy, https://www.uspto.gov/sites/default/files/documents/uspto-ai-strategy.pdf (Jan. 14, 2025).

²¹ Trump AI EO.

²² Executive Order 13589 (84 Fed. Reg. 3967), https://www.federalregister.gov/documents/2019/02/14/2019-02544/maintaining-american-leadership-in-artificial-intelligence (Feb. 11, 2019).

²³ 2014 Interim Eligibility Guidance, 2014-29414 (79 Fed. Reg. 241), https://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf (Dec. 16, 2014).

²⁴ Trump AI EO.

²⁵ AI and Emerging Technology Partnership Engagement, https://www.uspto.gov/initiatives/artificial-intelligence/ai-and-emerging-technology-partnership-engagement-and-events.

²⁶ Because the Copyright Office is part of the Library of Congress and not under the executive branch, the Copyright Office likely may continue with its AI studies, which are not being carried out pursuant to EO 14110.

This memorandum is a summary for general information and discussion only and may be considered an advertisement for certain purposes. It is not a full analysis of the matters presented, may not be relied upon as legal advice, and does not purport to represent the views of our clients or the Firm. Mark Liang, an O’Melveny partner licensed to practice law in California; Amy R. Lucas, an O’Melveny partner licensed to practice law in California; Marc J. Pensabene, an O’Melveny partner licensed to practice law in New York; Jonathan P. Schneller, an O’Melveny partner licensed to practice law in California; Cassandra Seto, an O’Melveny partner licensed to practice law in California; Ryan K. Yagura, an O'Melveny partner licensed to practice law in California and Texas; Pamela A. Miller, an O'Melveny partner licensed to practice law in New York; Steven J. Olson, an O'Melveny partner licensed to practice law in California; Jennifer B. Sokoler, an O'Melveny partner licensed to practice law in New York; and Meaghan VerGow, an O'Melveny partner licensed to practice law in the District of Columbia and New York, contributed to the content of this newsletter. The views expressed in this newsletter are the views of the authors except as otherwise noted.

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