AI Summit_Sept. 13 2024

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 is no invention . See Invitrogen Corp. ) (“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 that 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. 4. A natural person who develops an essential building block from which the claimed invention is derived may be considered to have provided a significant contribution to the conception of the claimed invention even though the person was not present for or a participant in each activity that led to the conception of the claimed invention. In some situations, the natural person(s) who designs, builds, or trains an AI system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the AI system is a significant contribution to the invention created with the AI system . The Section does not dispute this principle, but again submits the inclusion of “significant” is unnecessary and problematic. 5. Maintaining “intellectual domination” over an AI system does not, on its own, make a person an inventor of any inventions created through the use of the AI system, Therefore, a person simply owning or overseeing an AI system that is used in the creation of an invention, without providing a significant contribution to the conception of the invention, does not make that person an inventor. The Section agrees that “simply owning” an AI system without contribution to the conception of the invention does not make the owner of the AI system an inventor. However, the terms “intellectual domination” and “overseeing” may in some situations involve contribution to the conception of an invention made with AI assistance. V. Patent Practice A. Applicability of This Guidance to Design and Plant Patent Applications and Patents The Federal Circuit considered design patent inventorship in Hoop v. Hoop , 279 F.3d 1004 (Fed. Cir. 2004), cited by the Guidance at note 61. The court applied “the same standard of inventorship to design patents that we require for utility patents.” Hoop v. Hoop , 279 F.3d 1004, 1007 (Fed. Cir. 2004) (citing In re Rousso , 222 F.2d 729, 731 (CCPA 1955) (determining that no lesser standard of invention applies to design patents than to utility patents)). In view of Hoop , the same inventorship standard should apply to AI-assisted design patent inventions. For this reason, this Section agrees that the Guidance is applicable to design patent applications and patents.

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AI Roundtable Page 37