Patent application strategies in the field of artificial intelligence based on examination standards – Lexology

I. Introduction

Artificial Intelligence (AI) refers to an intelligence technology similar to human implemented by means of ordinary computer programs. With rapid development of artificial intelligence technology and continuous reflection of commercial values thereof, patent applications related to artificial intelligence technology have become a hot field in patent applications, and the number of applications is continuously rising, and scopes of application fields are also expanding.

This article aims attempts to provide some patent application strategies in the field of artificial intelligence based on latest examination standards in China, and summarize similarities and differences between examination standards in the field of artificial intelligence in China, Japan, Korea, US and Europe, for reference by patent applicants, and patent attorneys, etc.

II. Main laws involved and coping strategies

In China, as a patent application involving a computer program, the primary examination focus of a patent application in the field of artificial intelligence is whether the patent application is an eligible object protected by a patent, and another examination focus is the inventiveness as provided in Article 22, Paragraph 3 of the Chinese Patent Law.

Figure 1

Figure 1 shows the general examination process of a patent application in the field of artificial intelligence in China.

For a patent application in the field of artificial intelligence, it may be drafted as product claim or method claim, and the product claim may be drafted as an eligible subject, such as a system, a device, and a storage medium, etc.

Table 1 Forms of drafting of claims

Following description mainly focuses on analysis of latest examination standards of China and coping strategies regarding whether a patent application in the field of artificial intelligence belongs to an eligible object protected by a patent and whether it is in conformity with the provisions of inventiveness.

1. Examination standards and coping strategies regarding an eligible object protected by a patent

1.1 The latest examination standards on eligible object issues

It is provided in Article 25, Paragraph 1, Item (2) of the Chinese Patent Law that no patent right shall be granted for rules and methods for mental activities.

It is provided in the newly-amended Guidelines for Examination that if a claim contains a technical feature in addition to an algorithm feature or a commercial rule and a method feature, the claim as a whole is not a rule and method of an intellectual activity, and a possibility that it is granted a patent right shall not be excluded in accordance with Article 25, Paragraph 1, Item (2) of the Patent Law.

Moreover, it is provided in Rule 22, Paragraph 2 of the Implementing Regulations of the Chinese Patent Law that Invention as mentioned in the Patent Law means any new technical solution relating to a product, a process or an improvement thereof.

Correspondingly, it is provided in the newly-amended Guidelines for Examination that if steps involved in an algorithm in a claim reflect that they are closely related to the technical problem to be solved, for example, data processed by the algorithm are data having definite technical meanings in the technical field, execution of the algorithm is able to directly reflect a process of solving a technical problem by using natural laws, and produces a technical effect, then in general, the solution defined in this claim belongs to the technical solution provided in Article 2, Paragraph 2 of the Patent Law.

1.2 Application strategy for eligible object issues

Patent applications in the field of artificial intelligence may basically be divided into two types according to their application scopes: basic type patent applications and applied type patent applications. The so-called basic type patent application refers to that an algorithm involved in the patent application may be widely used in multiple particular fields, and the applied patent application refers to that an algorithm involved in the patent application is mainly combined with a particular field, and is an application in this field.

Taking two aspects into account, i.e. patent protection scope and conformity to examination requirements, ways of drafting the two types of patent applications are proposed for reference.

Table 2 Ways of drafting two types of patent applications

In addition, due to the development of Internet technology and big data technology, the artificial intelligence technology is also increasingly used in commercial and financial fields. In making an application for this type of patent, attention should be paid to combining a business rule, an algorithm feature and a technical feature in description.

Moreover, based on a stage of technological improvement, a patent application in the field of artificial intelligence may be divided into two stages: a training stage (learning stage) and an application stage. Following are corresponding ways of drafting.

Table 3 eligible subjects in two stages

2. Examination standard and coping strategy regarding inventiveness

2.1 Latest examination standards regarding inventiveness

It is provided in the newly-amended Guidelines for Examination that when examination regarding inventiveness is conducted on an application for patent for invention containing a technical feature and an algorithm feature, or a business rule and a method feature, the algorithm feature or the business rule and the method feature shall be taken into account together with the technical feature as a whole, when they functionally and mutually support the technical feature and have an interaction relationship between them and the technical feature.

2.2 Application strategy for examination on inventiveness

Based on the above examination standards, when an application for patent in the field of artificial intelligence is drafted, attention should be paid to combine an algorithm feature and a technical feature in describing the technical solution. Moreover, in describing a technical problem and a technical effect, emphasis should be placed on that the algorithm feature and the technical feature are specifically combined, and jointly solve the technical problem and produce a corresponding technical effect.

Furthermore, for some artificial intelligence patent applications not involved in improvement of a basic algorithm, their improvement points relative to existing technologies may mainly exist in application of an algorithm, such as a neural network, to a specific field, while the neural network itself is not changed much. For this type of patent applications, inventiveness may be considered mainly based on the following two aspects: first, whether the technical fields are similar; and second, a difficulty of applying the neural network to the technical field of the present application and whether a technical effect different from that in the original technical field is produced.

III. Comparison of examination standards of China, Japan, Korea, US and Europe

1. Comparison of examination standards of an eligible object protected by a patent

Comparisons of examination standards of an eligible object protected by a patent in China, Japan, Korea, US and Europe is as follows.

Table 4 Examination of an eligible object protected by a patent

in China, Japan, Korea, US and Europe

2. Comparison of examination standards of inventiveness

Comparison of examination standards of inventiveness in China, Japan, Korea, US and Europe is as follows.

Table 5 Examination of inventiveness in China, Japan, Korea, US and Europe

IV. Summary Patent applications in the field of artificial intelligence belong to patent applications involving computer programs, which need to meet the universal requirements on patent applications involving computer programs. Due to the specialty of the artificial intelligence technology, for patent applications in the field of artificial intelligence, the China National Intellectual Property Administration (CNIPA) has formulated new special examination regulations. Drafting of patent applications and the responses to examination opinions based on the latest examination standards are beneficial to applicants in obtaining patent rights of relevant technologies in China.

In addition, understanding of examination standards for patent applications in the field of artificial intelligence in major patent countries and regions in the world, namely China, Japan, Korea, US and Europe, is advantageous to global application strategy formulation and reasonable patent layout of applicants.

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Patent application strategies in the field of artificial intelligence based on examination standards - Lexology