AI Summit_Sept. 13 2024

accidental discoveries as of vulcanization of rubber and Teflon and the example in note 6 supra .by “recognition or appreciation” 9 Our detailed comments are organized to track the structure of the Guidance and the Examples. II. Inventors and Joint Inventors Named on U.S. Patents and Patent Applications Must Be Natural Persons The Section agrees that inventors and joint inventors must be natural persons and with the Guidance’s support therefor. III. AI-Assisted Inventions Are Not Categorically Unpatentable for Improper Inventorship The Section agrees with this proposition and the Guidance’s support therefor, particularly that “conception is the touchstone of inventorship. However, as presented in the introduction, the Section suggests deeper review of how “complete conception” is formed, particularly in given how innovation has evolved, including how investment is made. IV. Naming Inventors for AI-Assisted Inventions A. Significant Contribution The Section is generally aligned with patent eligibility where a human makes a contribution to the invention but is concerned with the imprecision of the term “significant” and reliance on Pannu (which addresses particular human contributions, including the inadequacy of the third factor). The Guidance itself reads out the literal language of “or reduction to practice” in the first Pannu factor because of the particular contributions at issue. The Section suggests, as presented in the introductory comments on the law, that “conception” be analyzed in the contexts of judicial pronouncements and the particulars of the innovation process at issue, and when “conception” is begun and completed, which may include “asking the right question” or “recognizing or appreciating” an invention under particular circumstances. B. Guiding Principles As stated in the introduction, the Section is concerned about the application of the relative human contribution Pannu factors in AI-assisted inventions: 1. A natural person's use of an AI system in creating an AI-assisted invention does not negate the person's contributions as an inventor.

9 Although guiding principle 3 states that reduction to practice alone and “mere” recognition and appreciation do not meet the Guidance’s “significant contribution” test, recognition and appreciation are necessary for a complete conception. 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”); 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”).

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