How to register AI patents in Asia-Pacific and Europe: the dos and don’ts
The lack of harmonisation when it comes to the patentability of AI-related inventions makes registering rights in this space ever more challenging. As rapid technological advancement must, by its very nature, outpace legislation, this leaves a swathe of critical innovations in a grey area when it comes to protection. The first edition of the Patent Prosecution Review dives into the hottest issues facing IP professionals around the world, revealing the latest hurdles that applicants must overcome in Australia, China, Europe and South Korea, as well as how to ensure success in these jurisdictions.
Patenting computer-implemented inventions in Australia and at the EPO
Do: highlight technical advantages and problems in the state of the art in Australia
While Australian case law on what constitutes a manner of manufacture of a computer-implemented invention continues to develop, current Australian Patent Office practice “typically involves identifying the substance of the claimed invention (ie, the contribution that the invention makes over the state of the art), and determining whether the substance lies within established principles of what does not constitute a patentable invention or lies outside of existing concepts of manner of manufacture”, according to Karen Rae Heilbronn Lee, Jacqueline Chelebian and Damon Henshaw of Spruson & Ferguson (see “Australia: Computer-related Inventions, Patent Term Extensions and Stricter Examination Trends”).
They advise that applicants in Australia highlight technical advantages and technical problems in the state of the art and include detailed technical descriptions of the invention in their patent specifications.
Don’t: be disheartened by patenting challenges at the EPO
The EPO attaches great weight to the term ‘technology’, and from it imports a requirement that an invention must be ‘technical’ or have ‘technical character’, say James Short, Simon Binnie, Howard Sands and Jason Pelly of Boult Wade Tennant (see “Specialist Chapter: Patenting Computer-implemented Inventions at the EPO”). However, the EPO’s definition of ‘technical’ departs somewhat from the common-usage definition. “Indeed, the EPO shies away from explicitly defining what is technical, although it does know what is not,” they report. “The design of programs for computers is not considered by the EPO to be a technical pursuit, for example. Similarly, the devising of rules and methods for performing mental acts and mathematical methods, which often form the core of a computer program, is not a technical pursuit.”
The inventive step is “the barrier that causes most problems for computer-implemented inventions at the EPO”, they warn. Specific case law on technicality has developed in machine learning, simulations and graphical user interfaces – and this vast corpus of decisions can be intimidating. However, the assessment of inventive step at the EPO for any computer-implemented invention can be “understood as a normal application of the well-known ‘problem-and-solution’ approach”. Although numerous issues often occur, Short, Binnie, Sands and Pelly insist that “if these are considered during the initial drafting process then prosecution can be greatly simplified”.
They caution that “drafting is almost always the one chance to really ‘get it right’, and practitioners and applicants will have many years to live with the decisions made here”.
While registering such inventions at the EPO can seem daunting given the long list of failed attempts reported in case law and the seemingly complicated requirements, it does remain achievable. “If you can show that the computer-implemented idea provides an advance in a field of technology that is not limited to one of the excluded classes mentioned above, you can be granted a European patent.”
Offering their predictions of future EPO practice in this area, Short, Binnie, Sands and Pelly expect that – if considered care is taken – the EPO will “remain consistent and fair in their examination of such cases”. “European patents for innovative enhancements to the underlying AI and ML technology should be granted, while merely applying known techniques to new problems may struggle.” AI and machine learning are key driving forces in what may turn out to be the next technological revolution. For those innovating in these fields, strong and effective IP protection is essential. “This often includes the need to obtain patents that not only survive first contact with the patent office but are also robust enough to stand up to post-grant challenges and subsequent litigation.”
Assessing eligibility of AI applications in China and the inventorship question in South Korea
Do: gain a thorough understanding of China’s examination guidelines
A new section of the China’s revised patent examination guidelines now provides “detailed rules for examining patent applications relating to [AI, Internet Plus, Big Data and blockchain] and aims to standardise the examination criteria of such applications”, Beijing East IP’s Xiuqin Zhao, Qiang Lin and Xiaobin Zong report (see “Specialist Chapter: How to Assess Patent Eligibility of AI Inventions in China”).
The China National IP Administration has emphasised that the eligibility examination of AI patent applications will now focus on the solution for which patent protection is sought – meaning that the solution is defined by the claim. “The examination of such solution shall be conducted in a way that ensures all of the contents recorded in the claim are taken as a whole,” they say. This is to analyse “the technical means involved, the technical problems solved and the technical effects obtained”, instead of simply breaking the claim down into and separately evaluating technical features and algorithmic features or features of business rules and methods.
According to current practice in China, “a relatively low-threshold criterion is used in the examination of whether a claim falls under the rules and methods for mental activities as stipulated in Article 25(1)”.
For AI patent hopefuls, “as long as the claim contains a technical feature or features, it can usually pass the examination”. However, the ‘three elements of technology’ test, a relatively high threshold, is also applied to determine whether a claim constitutes a technical solution, so it is critical that applicants have a deep understanding of the revised guidelines.
Don’t: underestimate dispute resolution methods in South Korea amid lack of inventorship clarity
Unlike the law in some jurisdictions, the Korean Patent Act does not explicitly define the term ‘inventor’, Young-Bo Shim and Dong-Hwan Kim of Lee International IP & Law reveal (see “South Korea: IP Office’s DABUS Nullification Highlights Stance Towards AI Inventors”). Instead, Article 2(1) defines ‘invention’ as a “highly advanced creation of a technical idea utilising the laws of nature”. As for a person entitled to register, Article 33 outlines “a person who makes an invention or a successor thereof has a right to a patent under this Act”.
In the Korean IP Office (KIPO)’s nullification of the DABUS application – Steven Thaler’s application that names an AI platform as an inventor – it “explored the legal requisite for inventorship, highlighting the necessity for AI to possess legal personality”, Shim and Kim state. They claim that this condition could be realised through a revision to the Civil Act. “Moreover, KIPO emphasised the imperative of ensuring international cohesion, especially considering that major foreign patent offices have yet to acknowledge AI inventors.”
Although KIPO and the Seoul Administrative Court determined that an inventor must possess legal capacity, the determination of ownership concerning the right to obtain a patent “does not fall within the purview of the formality examination process”, Shim and Kim say. Instead, such matters are typically addressed and resolved through negotiations among the involved parties. “Well-established legal procedures for resolving disputes involving unentitled rights holders offer a means to effectively settle any conflicts arising over ownership” in South Korea, they argue.
Shim and Kim remain wary of the rapid pace of technological advancement, which “often outpaces development of corresponding laws and policies, inevitably leading to gaps and challenges”. To mitigate these gaps, how legal interpretations are made must be considered comprehensively, they advise. These should be “geared towards fostering technological progress while minimising legal gaps, ultimately benefitting human progress”. They assert that an appropriate precedent that permits AI to be designated as an inventor in South Korea will need to be established in order to effectively navigate technological progress while upholding legal stability.
The IAM Patent Prosecution Review was published in November 2023 and takes a wide-ranging view of best strategies for securing patents in the key regions of the Americas, the Asia-Pacific and Europe, the Middle East and Africa. The Review can be accessed here.