AI Summit_Sept. 13 2024

listed inventor was not scrutinized beyond some comparison with a human seeking inventorship or sole inventorship based on that human’s activities. Pannu itself involved a case where a putative joint inventor contributed the idea of a one-piece construction for an inventive lens claimed in a continuation-in-part. The third Pannu factor of “not merely explain[ing] to the real inventors well-known concepts and/or the current state of the art” was supported by citation to Hess v. Advanced Cardiovascular Systems, Inc .,106 F.3d 976, 981 (Fed. Cir. 1997), where a sales representative of a plastics manufacturer offered a particular plastic that the inventors of a balloon catheter had previously been unable to find. Hess in turn cited to O'Reilly v. Morse, 56 U.S. (15 How.) 62, 111 (1853), which dismissed the conversations Morse allegedly had in the European scientific community, which information the Court found to be necessary for “such an invention . . . unless it was discovered by some fortunate accident.” The Court held that it was adequate for invention that “the process and means were so far developed and arranged in his own mind, that he was confident of ultimate success.” Id. at 109 (emphasis added). That was an early statement of “conception” adequately complete to be considered invention. (See discussion below). The Guidance reads out the “reduction to practice” from the first Pannu factor that literally embraces contribution to “conception or reduction to practice” by explaining that a precedent relied upon by Pannu required “simultaneous conception and reduction to practice” and under “settled law,” contribution to reduction to practice “is not enough to constitute inventorship.” 89 Fed. Reg. at 10047-57, nn. 41-46. If simultaneous, the first Pannu factor statement might simply have been significant contribution to “conception” (which would include reduction to practice). It is difficult to envision two human inventors first conceiving completely at the same moment, or if conception is not sufficiently complete until some reduction to practice, then only the human investigator who first reduced to practice and “recognized or appreciated” that complete conception should be the inventor to the exclusion of another human who had directed that investigation with a yet-to-be-complete conception. The dearth of cases on conception/invention between named inventors is not surprising. 3 Might “conception” requiring some reduction to practice to qualify as invention occur along some continuum among different human actors – as between members of a research team? The uncertainty as to what would qualify as a “significant contribution to conception” under the Pannu factors and the rejection as such of a relatively simple prompt and resultant answer in the transaxle of a toy car example in Example 1, Scenario 1 pose real risks to desirable diffusion of knowledge and investment in otherwise patentable inventions. See notes 1 and 2 supra. Questions on whether and how to avail of the patent system are already being presented by the use of some AI tools to identify drug candidates or to predict protein folding and binding. 4 An ex ante (patent application stage) a rule on patent eligibility based on how a tool is used – and concomitant questions on when and how such usage needs to be disclosed in compliance with disclosure rules – are impractical as to whether and how facts are to be presented. Unlike a guidance that validates as adequate invention a particular contribution such as “recognition or 3 For example, whether the two inventors in Hess conceived simultaneously is not explained in the decision. 4 As an example, MIT recently announced that, “[u]sing a type of artificial intelligence known as deep learning, MIT researchers have discovered a class of compounds that can kill a drug-resistant bacterium that causes more than 10,000 deaths in the United States every year”. Using AI, MIT researchers identify a new class of antibiotic candidates | MIT News | Massachusetts Institute of Technology.

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