AI Summit_Sept. 13 2024

The Section agrees with this principle. 2. Merely recognizing a problem or having a general goal or research plan to pursue does not rise to the level of conception. A natural person who only presents a problem to an AI system may not be a proper inventor or joint inventor of an invention identified from the output of the AI system. However, a significant contribution could be shown by the way the person constructs the prompt in view of a specific problem to elicit a particular solution from the AI system. The Section objects to the first and second sentences as categorical statements. The qualifications of “merely” and “may” require further explanation to be useful guidance for stakeholders. In some situations, recognizing a problem, “asking the right question” may be an inventive conception if it is “complete” under the precedent for completeness of conception. Although the paradigm of a “prompt” evokes currently popular “general purpose AI” with varying front ends (prompt interfaces) such as “ChatGPT” (as in Example 1), while the third sentence addresses the more technically detailed scenario of Example 2, it may be that the step of a human “identifying” and invention (and perhaps filing a conforming patent application) is a meritorious “recognition and appreciation.” 10 See comments to principle 3. Furthermore, the focus of the analysis should be on whether there is a human conception, not whether there is a “significant” contribution. At a minimum, this statement should delete the word “significant.” The inclusion of “significant” is a misapplication of Pannu , which was directed to the question whether a person made a significant contribution to the conception, not whether there was a conception. 3. Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. Therefore, 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. However, a person who takes the output of an AI system and makes a significant contribution to the output to create an invention may be a proper inventor. Alternatively, in certain situations, a person who conducts a successful experiment using the AI system's output could demonstrate that the person provided a significant contribution to the invention even if that person is unable to establish conception until the invention has been reduced to practice. The Section objects to the first sentence as a categorial statement and respectfully suggests it misses the point of whether there is a human inventor. It is a correct statement in the context of assessing whether a person qualifies as a joint inventor (i.e., there is conception by a human inventor and the legal question is whether another person contributed significantly to the conception to be a joint inventor) as in Pannu (which itself literally states that “reduction to practice” may be where as “significant contribution” is counted), but the Section suggests that a deeper analysis be made as to “conception.” Conception is an inherently human activity and is the hallmark of invention. A person must have an original conception of an invention to be an inventor. The relevant aspect of conception to this issue is the requirement that an inventor must recognize or appreciate the invention. In other 10 The Section disputes the applicability of Solvay S.A. v. Honeywell Intern. Inc., 622 F.3d 1367, 1378–79 (Fed. Cir. 2010), cited in the Guidance note 56. (The question before the court was whether those in the U.S. that received the invention previously conceived in Russia could be an inventor. They could not, as there was no original conception, and therefore they were not “another inventor” under 102(g)(2). 622 F.3d 1367, 1377 (Fed. Cir. 2010).)

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