AI Summit_Sept. 13 2024

appreciation” of the invention, 5 the Guidance’s application of the Pannu factors is not helpful but raises doubts that burden patent application and investment strategy. The Guidance’s Rejection of “Recognition and Appreciation” as Inventive Acts Is Unsupported To the contrary, although the Guidance recognizes that “recognition and appreciation are generally required for complete conception,” 89 Fed. Reg. at 10047, its guiding principle 3 posits that “a natural person who merely recognizes and appreciates the output of an AI system as an invention, particularly when the properties and utility of the output are apparent to those of ordinary skill, is not necessarily an inventor.” 89 Fed. Reg. at 10048, citing (as “ see, e.g ,”) Solvay S.A. v. Honeywell Intern. Inc., 622 F.3d 1367, 1378–79 (Fed. Cir. 2010). As recognized by the Guidance’s citation, Solvay only supports the obvious principle that “deriving the invention of another and appreciating what was made did not rise to the level of conception.” 89 Fed. Reg. at 10048 n. 56. 6 While recognizing that “recognition and appreciation” are required for “complete conception,” the Guidance reasons that joint inventors must each make a significant contribution to the conception because there is no requirement that each inventor must recognize and appreciate. 89 Fed. Reg. at 10047, citing solely to Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1206 (Fed. Cir. 1991). Respectfully, Amgen does not support this logical leap. In Amgen , there was a dispute as to whether a Dr. Fritsch was a prior inventor under section 102(g). In resolving this dispute, the court held “that when an inventor is unable to envision the detailed constitution of a gene so as to distinguish it from other materials, as well as a method for obtaining it, conception has not been achieved until reduction to practice has occurred.” 927 F.2d at 1206. Amgen reasoned that “[c]onception requires both the idea of the invention’s structure and possession of an operative method of making it.” Id . That “each [named] inventor must make a significant contribution to the conception of the invention” does not follow from the reasoning or holding of Amgen . The Guidance fails to consider whether “recognition and appreciation,” being required for “complete conception” can be a significant contribution to conception, at least because it is required for complete conception. As reviewed in note 6 supra , accidental discovery becomes 5 Relevant to inventorship is the requirement that an inventor must recognize or appreciate the invention. In other words, if a chemist accidentally makes a new chemical and never appreciates that they did so, then they are not an inventor of the new chemical (assuming they later learn – perhaps by re-analyzing saved samples – that they made the new chemical accidentally). Another example is when scientists use random mutagenesis. Until the scientist appreciated the output/result, there was no invention . See Invitrogen Corp. v. Clontech Laboratories, Inc ., 429 F.3d 1052, 1063 (Fed. Cir. 2005) (“In other words, conception requires that the inventor appreciate that which he has invented”). If an AI algorithm identifies the elements (parts) of something but no one recognizes it (sits in the computer and/or on the printer and no one looks at it) then there is no invention. When a skilled person looks at the AI output and appreciates the parts make a complete and operable invention (often with further testing but assume there is no further testing), then this recognition is the completed conception. See also Dow Chemical Co. v. Astro-Valcour, Inc. , 267 F.3d 1334, 1341 (Fed. Cir. 2001) (“the cases establish that the date of the conception of a prior inventor's invention is the date the inventor first appreciated the fact of what he made”). 6 The issue in Solvay was whether Honeywell was a prior inventor under 102(g)(2). The court held that Honeywell was not an “inventor” because Honeywell merely “reproduced the invention previously conceived ... by [another person].” 622 F.3d at 1377. Solvay , therefore, stands for the common-sense proposition that a person that recognizes and appreciates an invention conceived by another person is not an inventor of the invention. See id . (“Such reproduction cannot be conception because, if it were, the result would be that one who simply followed another inventor's instructions to reproduce that person's prior conceived invention would, by so doing, also become an ‘inventor.’”) (emphasis added).

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