Defining Sufficient Human Contribution For Inventorship In The U.S. And Germany

Defining Sufficient Human Contribution For Inventorship In The U.S. And Germany Speaker: Prof. Shemtov Date: 4 December 2024 The Requirement For Designating Inventors - Section 37 of the German Patent Act (Patentgesetz) - The applicant is required to designate the inventor when filing a patent application. - Section115 of the U.S. Patent Act - Identification of Inventor(s): The inventor or inventors must be identified in the patent application. - Section 13 of the UK Patents Act 1977 - The patent application must include a statement identifying the inventor or inventors of the invention. - Article 81 EPC and Rule 19(1) EPC - obligatory designation of inventor. POST DABUS - A designated inventor must be a natural person • US • UK • Australia • Germany Which Type Of Human Contribution Is Necessary To Qualify As An Inventor? - Feb. 2024 • - US PTO Guidance June 2024 • Germany (Bundesgerichtshof) USPTO'S 'Significant Contribution' Requirement - Al-assisted inventions can be patented if a natural person has made a "significant contribution" to each claim in the application. - The concept of "significant contribution" can be linked to the Federal Circuit's 1998 ruling in Pannu v. lolab Corp., • Each named inventor must contribute in some significant manner to the invention. So, each named inventor must satisfy the three Pannu factors:  Contribute in some significant manner to the conception or reduction to practice of the invention;  This contribution is not insignificant in quality, when it is measured against the dimension of the full invention, and  Do more than merely explain to the real inventors well-known concepts and/or the current state of the art. USPTO'S "Guiding Principles" - A natural person's use of an Al system in creating an Al-assisted invention does not negate the person's contributions as an inventor. - 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 Al system may not be a proper inventor or joint inventor of an invention identified from the output of the Al system. • However, a significant contribution could be shown in how the person constructs the prompt in view of a specific problem to elicit a particular solution from the Al system. - Reducing an invention to practice alone is not a significant contribution that rises to the level of inventorship. • A natural person who merely recognizes and appreciates the output of an Al 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 Al system and makes a significant contribution to the output to create an invention may be a proper inventor. - 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 Al system in view of a specific problem to elicit a particular solution could be an inventor, where the designing, building, or training of the Al system is a significant contribution to the invention created with the Al system - Maintaining "intellectual domination" over an Al system does not, on its own, make a person an inventor of any inventions created through the use of the Al system. • A person simply owning or overseeing an Al 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. IMPLICATIONS - Cases of Al-assisted inventions, where: • Worthy innovation with societal benefit is created • A natural person maintains Intellectual domination over a process, BUT • The Al generates outputs, and the person overseeing the process recognises and appreciates the significance and utility of the output, however this may be apparent or 'obvious' to the skilled person. Alternatively, where the inputs that prompt the Al may be an exercise of normal skill expected of the skilled person. • No inventor may be identified under the Guiding Principles. In such cases, NO PATENT GRANT Critique - Conflation of the concept of obviousness with inventorship. - The obviousness of a skilled person's appreciation or recognition of the utility and significance of an Al output should not be considered as part of the inventorship inquiry. Instead, it should be assessed during the inventive-step stage of the examination process - For example, if the Al tool and the data sets on which it was trained are considered part of the state of the art, and the significance and utility of its output are deemed obvious, the invention is likely to be classified as obvious. - In contrast, if the Al tool is not part of the state of the art, the invention as a whole may not be deemed obvious, regardless of the "obviousness" of the output's significance and utility, or of the prompts, as the skilled person would not have access to such Al tool. This could lead to a patent being granted. This is a desired outcome! • Without patent protection, the invention may remain undisclosed, restricting public access. In such cases, the innovation is unlikely to be easily repeated by competitors, as the Al tool involved is not part of the state of the art. - Encourage validity challenges