AI-Generated Molecules in Publications Can Still Count as Prior Art

AI-generated molecules that exist only in a publication can still count as prior art.

Writing in c&en Chemical & Engineering News, Justin Krieger of Kilpatrick Townsend & Stockton LLP identifies three pressure points AI puts on chemistry patents: inventorship, obviousness, and prior art.

Inventorship and the Conception Test

Only humans can be inventors, as the Federal Circuit held in Thaler v. Vidal (2022). The USPTO's November 2025 guidance treats AI as a tool and applies the same conception test whether or not AI was used: a natural person must form a definite and permanent idea of the complete invention.

Krieger poses a hypothetical researcher who selects and validates one of 10,000 model-generated structures. In Burroughs Wellcome v. Barr (1994), the scientists who selected AZT for testing conceived AZT's use against AIDS, and the NIH researchers who ran confirming tests did not. The hypothetical researcher looks more like the Burroughs scientists. Krieger warns that a passive recipient of a model's output may leave a compound with no human inventor. Where the model selects the compound, the chemist's validation may be the moment of conception. In some unpredictable fields, the Federal Circuit has recognized, conception occurs only with a successful experiment.

Obviousness and the Evolving POSITA

Obviousness is measured against a hypothetical person of ordinary skill in the art (POSITA). Section 103 of the Patent Act provides that patentability "shall not be negated by the manner in which the invention was made," so using AI does not by itself make an invention obvious. If AI design tools become standard, the POSITA arguably has them too, and the bar for a new compound could rise.

Defensive Prior Art and Enablement

Krieger describes companies publishing unsynthesized AI-generated variants as defensive prior art, and asserts that merely disclosing a compound is "likely insufficient" to enable synthesis and use. In Agilent v. Synthego (2025), a CRISPR case, the Federal Circuit applied a lower bar for prior art. A publication is presumed enabling, and the reference need only teach how to make the disclosed subject matter. Prophetic examples, experiments described but never run, left the presumption intact. The patent owner can rebut the presumption with evidence of undue experimentation. Agilent's Supreme Court petition warned that AI makes candidate-compound lists trivial to publish, and the Court denied review in March 2026.

Krieger concludes that AI-assisted discoveries remain fully patentable so long as human intelligence guides, curates, interprets, and validates the process.

Actionable Steps for Chemistry R&D and IP Teams

• Record who set screening criteria and why a selected structure beat rejected ones.
• Search AI-generated disclosures when scoping protection for a compound. A new use of a disclosed compound may still be patentable.

Sources

1. 1. Justin Krieger, 𝘛𝘩𝘦 𝘈𝘐 𝘱𝘢𝘵𝘦𝘯𝘵 𝘱𝘢𝘳𝘢𝘥𝘰𝘹: 𝘉𝘢𝘭𝘢𝘯𝘤𝘪𝘯𝘨 𝘪𝘯𝘯𝘰𝘷𝘢𝘵𝘪𝘰𝘯 𝘢𝘯𝘥 𝘪𝘯𝘨𝘦𝘯𝘶𝘪𝘵𝘺 𝘪𝘯 𝘤𝘩𝘦𝘮𝘪𝘴𝘵𝘳𝘺, Chemical & Engineering News (Sept. 8, 2026): https://cen.acs.org/policy/intellectual-property/ai-intellectual-property-chemistry-patents/104/web/2026/09
2. 2. 𝘛𝘩𝘢𝘭𝘦𝘳 𝘷. 𝘝𝘪𝘥𝘢𝘭, 43 F.4th 1207 (Fed. Cir. 2022)
3. 3. USPTO, Revised Inventorship Guidance for AI-Assisted Inventions, 90 Fed. Reg. 54636 (Nov. 28, 2025): https://www.federalregister.gov/documents/2025/11/28/2025-21457/revised-inventorship-guidance-for-ai-assisted-inventions
4. 4. 𝘉𝘶𝘳𝘳𝘰𝘶𝘨𝘩𝘴 𝘞𝘦𝘭𝘭𝘤𝘰𝘮𝘦 𝘊𝘰. 𝘷. 𝘉𝘢𝘳𝘳 𝘓𝘢𝘣𝘴., 𝘐𝘯𝘤., 40 F.3d 1223 (Fed. Cir. 1994); Amgen Inc. v. Chugai Pharm. Co., 927 F.2d 1200 (Fed. Cir. 1991)
5. 5. 35 U.S.C. §§ 100(b), 103
6. 6. 𝘈𝘨𝘪𝘭𝘦𝘯𝘵 𝘛𝘦𝘤𝘩𝘴., 𝘐𝘯𝘤. 𝘷. 𝘚𝘺𝘯𝘵𝘩𝘦𝘨𝘰 𝘊𝘰𝘳𝘱., 139 F.4th 1319 (Fed. Cir. June 11, 2025), 𝘤𝘦𝘳𝘵. 𝘥𝘦𝘯𝘪𝘦𝘥, No. 25-570 (U.S. Mar. 30, 2026): https://www.cafc.uscourts.gov/opinions-orders/23-2186.OPINION.6-11-2025_2528805.pdf