AI Summit_Sept. 13 2024

B. Duties Owed to the USPTO (i) Duty of Disclosure

The Section opposes an obligation to disclose how an invention was made, including an invention made using AI tools. The Section notes that disclosure of the use of AI tools could be necessary in some cases to comply with 35 U.S.C. § 112 requirements of enablement and demonstration of “possession” of a claimed invention; however, Section opposes an obligation to disclose the use of AI tools, including the human prompts involve in the use of the AI tools. (ii) Duty of Reasonable Inquiry The Section has no additional comment on this subsection. C. Naming the Inventors The Section has no comment on this subsection. D. Requirements for Information The Section has no comment on this subsection. E. Inventor's Oath or Declaration The Section has no comment on this subsection. F. Applicant and Ownership The Section’s prior positions was that an AI agency may not apply for or own a U.S. patent. It reserves the question of ownership of proprietary rights should an invention otherwise not excluded from patenting under 35 U.S.C. §§ 102, 103, and 112. G. Benefit/Priority Claims to Prior-Filed Applications The Section has no comment on this subsection. Accompanying Examples or Scenarios The Section believes that Example 2 is correctly analyzed under this approach, but Example 1 is not. By introducing the concept of “significant contribution” to the question of whether there is or is not a human conception, there is conflation in Example 1, as in the guiding principles on “asking the question” or “merely recognizing or appreciating” the invention as to what is “obvious.” Example 1 The Section submits that Example 1 conflates obviousness and conception because of this [misplaced] focus on significant contribution to identify an inventor (rather than a joint inventor). Example 1 provides using the output (Puerto5): “Ruth and Morgan reviewed the output of Puerto5 and agreed the design should work for the RC car. However, recognition and appreciation of the invention without any

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AI Roundtable Page 38