David S. Olson (Boston College Law School) has posted Beyond Conception: AI, the America Invents Act, and the Temporal Anchor of Invention, Brooklyn Law Review, Vol. 92 (forthcoming) on SSRN. Here is the abstract:
Artificial intelligence systems increasingly generate technical solutions before any human has anticipated, formulated, or understood them. Under current patent doctrine, these inventions may be unpatentable—not because they fail requirements of novelty, utility, or disclosure, but because they lack a psychologically framed moment of human conception. This Article argues that the continued centrality of conception is both historically contingent and doctrinally unnecessary. Conception arose as a priority-allocating device under the first-to-invent regime. The America Invents Act (AIA) eliminated that regime, replacing it with a first-inventor-to-file system in which priority turns on filing date. Yet conception persists as the definitional anchor of invention, retained by doctrinal inertia rather than functional necessity. Every substantive concern that conception might plausibly serve (screening for operability, ensuring disclosure, preventing trivial patenting) is already performed more directly by existing requirements of utility, enablement, written description, novelty, and obviousness. This Article proposes relocating the temporal anchor of invention from mental formulation to demonstrable technological achievement through actual or constructive reduction to practice. This realignment harmonizes patent doctrine with the AIA’s statutory structure, accommodates computational modes of innovation without inventorship metaphysics, and preserves every existing safeguard against speculative or overbroad patenting.
Recommended!