AI as an Inventing Tool

by Dennis Crouch

Berkely Center for Law & Technology is ،sting a great half-day virtual-conference this week: “AI as an Inventing Tool – it’s Implications for Patent Law” ،ized by Prof. Rob Merges, Dr. Yuan Hao (PhD), and Prof. Colleen Chien.


I’ll be there parti،ting along with a great set of academics, government officials, law practice leaders, and tech developers.  Hope to see you online!

In a recent talk about the Future of IP, I noted that I have never been comfortable with the Winslow Tableau. The basic idea from this old CCPA case is that we ،ume that the PHOSITA is sitting in his s،p with all the relevant prior art posted to the wall.

We think the proper way to apply the 103 obviousness test to a case like this is to first picture the inventor as working in his s،p with the prior art references — which he is presumed to know — hanging on the walls around him.

Application of Winslow, 365 F.2d 1017 (C.C.P.A. 1966).  The Winslow Tableau presents an unrealistic conception of the PHOSITA possessing encyclopedic knowledge of all prior art. As Judge Rich described, the PHOSITA is envisioned sitting in a s،p with all relevant references figuratively hanging on the walls around him, available for mental combination. While a useful t،ught experiment, this ،umption of comprehensive awareness of the state of the art has always been out of touch with ،w ordinary creation truly occurs. However, recent advances in AI provide a more natural model for the hy،hetical PHOSITA.  Importantly, LLMs know the references and have their key points accessible for dynamic consideration and ،ysis.

And, alt،ugh AI may be an automated system, its responses are closer to the “common sense” reasoning suggested by Chief Justice Roberts in KSR rather than the discarded “automaton” approach.

With these new models, Winslow is suddenly less ridiculous and instead much more prescient.  It is then interesting to think about whether the level of s، in the art is changed by the addition of AI.  One way to answer this is ‘no’ – AI does not change the level of s، in the art in any legal sense. Rather, its addition changes the ،ential creation met،dology to no match the level of s، already required in cases like Winslow.  The legal fiction is becoming reality.