AI Summit_Sept. 13 2024

complete conception only upon recognition or appreciation. Even if AI-suggested drug candidates or design options were considered “accidental” (notwithstanding prompting), the rule suggested in guiding principle 3 that excludes human conception by recognition or appreciation would exclude meritorious discovery from patenting. The Question Is Whether a Named Human Inventor Did Not Invent For the foregoing reasons, the Section recommends focusing any inventorship inquiry, on examination or subsequent review, not on Pannu competing inventorship as between humans, but on closer case-by-case assessment of “conception” as the “touchstone of inventorship,” 7 which may be manifested at various points in the invention/discovery process. The Section suggests a more extensive review of the history and context of the judicially-created notion of “conception” that for decades established a person who was the “first to invent” if followed by diligent efforts to “reduce to practice” and its place in the twenty-first century investment (and incentives therefor) under the America Invents Act of 2011 “first inventor to file [a patent application confirming to 35 U.S.C. § 112 requirements of enablement and written description demonstrating possession].” Although the Supreme Court has recognized the centrality of “conception” to “invention,” 8 it has never defined what is meant by “conception.” The closest it has gotten to shedding light on the principle was in Coffin v. Ogden , 85 U.S. 120, 124 (1873), where it stated that the defense of prior invention “must have been complete, and capable of producing the result sought to be accomplished.” 85 U.S. 120, 124 (1873). The requirement of “definite and permanent idea of the complete and operative invention” was set forth in Mergenthaler v. Scudder , 11 App. D.C. 264 (D.C. Cir. 1897) from 1 Robinson on Patents § 532 (1890). The Court of Customs and Patent Appeals adopted the principle as early as Townsend v. Smith , 36 F.2d 292 (C.C.P.A. 1929). The Federal Circuit applied the principle in Coleman v. Dines , 754 F.2d 353, 359 (Fed. Cir. 1985), Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting 1 Robinson on Patents 532 (1890)) and then Sewall v. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994). Mergenthaler was further refined by In re Tansel , 45 C.C.P.A. 834, 253 F.2d 241, 243 (C.C.P.A. 1958) not strictly construed, but it has been stated) wherein it was held that “[i]t is sufficient if the inventor is able to make a disclosure which would enable a person of ordinary skill in the art to construct the apparatus without extensive research or experimentation.” ). The traditional “constructive reduction to practice” by filing an adequate patent application has been supplemented by the later requirement of “written description” construed to mean demonstration of “possession” of the claimed invention. The Section submits that what constitutes a “complete conception” varies may vary for different invention scenarios and may be met in some cases at different steps of the invention-and patenting process by “recognition or appreciation” (which the Guidance, 89 Fed. Reg. at 10047, requires for “complete conception”). That may include the “fortuitous discovery” at least hypothesized by the Morse Court (56 U.S. (15 How.) at 111) – and exemplified by such 7 See Guidance at nn.19 & 20. The Section respectfully suggests that “conception” may be further developed to address its concerns in preparation for the Office’s directives to “promote innovation” under Executive Order 14110 (Oct. 30, 2023) (“EO”) section 5.2(c)(ii) to issue additional guidance and 5.2(c)(iii) to consult with the U.S. Copyright Office and “address any copyright and related issues. 8 Pfaff v. Wells Elecs., Inc., 525 U.S. 55, 60 (1998), cited at Guidance n. 19. See quotation from Morse at note 1.

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