AI Summit_Sept. 13 2024

significant contribution to the conception of the claimed invention is not sufficient for inventorship . Therefore, their contribution amounts to recognizing the problem and asking an AI system to solve the problem. For these reasons, Ruth and Morgan’s contribution was not a significant contribution to the conception of the invention.” This is incorrect as a matter of law. More importantly, it conflates conception with considerations regarding obviousness. Conception is completed when “Ruth and Morgan reviewed the output of Puerto5 and agreed the design should work for the RC car.” Some inventions may require wet lab confirmation to validate. Some may be “agreed” simply applying skill in the art. The analysis of “significant contribution” that requires something more is akin to requiring a flash of genius or some sort of inventive step, which is not the law. On these facts, the RV car may be obvious without a significant contribution, but the law recognizes a conception when it was “reviewed… and agreed.” Example 2 The Section agrees with the conclusion reached in Example 2, but again submits the inclusion of “significant” in the analysis introduces ambiguity and is unnecessary. Conclusion The Section suggests that ex ante consideration in patent examination of human-versus-AI contribution as to how an invention was made -- rather than what is claimed and whether it is described and enabled -- presents unnecessary and undesirable uncertainty for disclosure and investment. Accordingly, the Section respectfully requests that adjustments be made pursuant to the Guidance to focus more on the different ways a human may conceive adequately to support inventorship (including “recognition and acknowledgment”). * * * Should you have additional questions, we would welcome further discussion with the Office. Sincerely,

Steven P. Caltrider, Chair ABA Section of Intellectual Property Law

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AI Roundtable Page 39