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« United Therapeutics Corp. v. Liquidia Technologies, Inc. (Fed. Cir. 2023) | Main | RegenxBio Inc. v. Sarepta Therapeutics, Inc. (D. Del. 2024) »

February 12, 2024

Comments

Can one HAVE a "joint-inventor" with an AI, does it even make sense to BE such?

If, per Thaler, the other "joint-inventor" cannot be presented, AND there is still a requirement TO present ALL joint-inventors, one is stuck in a tautology that ANY patent so processed is fatally constructed.

Further to that fatal construction, there are two additional wrinkles:

First is the requirement to report by way of IDS that which was generated by an AI.

This itself has multiple wrinkles.

We face (as I have pointed out) the dichotomy of whether or not AI CAN "invent."

If the answer is "no," then it must be taken that ALL of what AI presents must be understood to be nothing more than what exists in the prior art. This of course has an immediate "another" impact as to what does that other legal fiction that represents State of the Art mean: Person Having Ordinary Skill In The Art.

If the answer is "yes," then per Thaler, THAT portion cannot be captured in a claim, as all inventive elements of a claim must be reflected by both the list of inventors - and those inventors must swear or affirm the contents. This is of course the NECESSARY result that only a human's inchoate property may become a bundle of sticks of personal property through the patent process (in a corollary, even though a photograph objectively exists, there is NO copyright for the Simian Selfie).

There is NO 'getting around this' as the Office may want to hint at, because the Office is NOT the body that actually sets governing law.

We have seen this repeatedly over the last decade in view of examples under 101 that the courts have turned around and flat out rejected.

The second wrinkle is that ALL practitioners are now ON NOTICE that AI elements must be separated out.

And yes - those Pharma executives that testified before Congress last year that you were already actively using generative AI to distinguish inventive matter, this means you and your practitioners.

Further - these items were put on the table for discussion YEARS ago now - when the DABUS case first came out.

Naysayers gonna say nay.

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