Call for industry views on AI and IP and ViCo – Lexology

The era of public consultations

In the last 3 years, several intellectual property offices have invited the global IP community to express our views on what we need from them and from legislators. The EPO has been very open consulting on its quality and efficiency initiatives (via SACEPO), an idea for flexible timing of examination, its strategic plan, its Guidelines for Examination, and the Rules of Procedure of its Boards of Appeal. All of WIPO, USPTO, EPO and the UKIPO have been consulting on artificial intelligence and IP.

This is excellent and AA Thornton attorneys have enjoyed the debates including learning from industry experts about your requirements from the global patent system that exists to serve you. For those industry experts who have not yet joined the debate on AI and IP, we call upon you to express your views lets tell the IP offices what you need. Some of the consultations will close very soon.

Blink and you missed it

On 13 November, the EPO Boards of Appeal proposed an amendment to their Rules of Procedure (RPBA) to codify their discretion to hold oral proceedings by videoconference. See https://www.epo.org/law-practice/consultation/ongoing.html

Send your comments to RPBAonlineconsultation@epo.org

The proposed new Article 15a of the Rules of Procedure of the Boards of Appeal (oral proceedings by videoconference) is:

Article 15a Oral proceedings by videoconference (1) The Board may decide to hold oral proceedings pursuant to Article 116 EPC by videoconference if the Board considers it appropriate to do so, either upon request by a party or of its own motion. (2) Where oral proceedings are scheduled to be held in person, the Chair may allow a party, representative or accompanying person to attend by videoconference. In exceptional circumstances, the Chair may decide that a party, representative or accompanying person shall attend by videoconference. (3) The Chair may allow any member of the Board in the particular appeal to participate by videoconference.

The decision for industry is whether to accept this or to recommend that appeal hearings are only held by videoconference if all parties to the proceedings agree.

AA Thornton praised the EPO for investing in its videoconferencing capacity for examination hearings long before the current pandemic. We have found videoconference oral proceedings to be efficient and effective for those proceedings, and we recognize the need to avoid long backlogs at the EPO. However, our support for videoconference hearings is dependent on the EPO maintaining a level playing field for all parties to an opposition, and we do not think this will be achieved if only one party to an opposition appeal is able to attend in person and another is required to attend by videoconference because of the global pandemic and travel restrictions imposed by national governments (for example, this could disadvantage a US patent proprietor whose patent has been challenged by a European competitor).

We therefore recommend revising the second sentence of proposed RPBA Article 15a to make it clear that a hybrid appeal hearing (with some parties physically present and some using videoconference) requires the consent of the parties.

Some attorneys have expressed a view that no appeal hearings should take place by videoconference without the consent of all parties to the appeal proceedings. Other attorneys think ViCos are the best possible answer to the global pandemic. Whatever your views, we encourage industry experts to share them with the EPO.

Saving me from domestic chores this weekend

The consultation which could rescue me from cold hard labour is the UKIPOs consultation on AI and IP, which is mentioned here: https://www.gov.uk/government/news/artificial-intelligence-and-intellectual-property-call-for-views

The consultation closes at 11:45pm UK time on 30 November 2020.

Please send me your recommendations for reply to the UKIPOs patent questions or email AIcallforviews@ipo.gov.uk.

The most fundamental question relating to patents is whether: i. you recommend that inventions must be devised by one or more humans to be patentable, with this human inventorship retained as an absolute requirement for patentability, or just that UK law should not be changed to account for inventions made using AI-based systems without a longer discussion with industry stakeholders about the economic and social impacts of any potential changes. or ii. you recommend a legislative change now, to allow patent protection for AI system-generated solutions to technical problems which would have qualified for patent protection if devised by a human, but which currently do not qualify because the contributions by human programmers and operators were too minor or peripheral to qualify as devising an invention under current UK national law.

We should take time to discuss the wording of any proposed legislative change, but I believe there will be significant benefits for applicant companies who invest in AI-driven innovation if UK law recognizes that inventions can be devised using an AI system, and should be protectable when there are significant contributions to the invention by the AI system that is programmed, implemented, trained or controlled by a human. This recognition of human + system contributions would be analogous to the recognition of different contributions of co-inventors under current UK law we do not require a single inventor to devise each invention in isolation.

AI experts are already identifying domain-specific inventions generated by their AI systems that would be patentable except for the difficulty identifying a human inventor who qualifies as the deviser. Should these AI-system-generated solutions be patentable? Are they inventions at all if there is no devising human inventor? Is it necessary to revise patent laws to encourage investment in AI innovation and/or to clarify ownership of inventions for which the human contribution is a small one that falls short of the current understanding of devising an invention under UK law?

Do you think patentability should be based on the contribution to the state of the art regardless of how an invention is devised, and that rules for ownership of AI-generated inventions are needed now; or do you think there must always be an identified (i.e. correctly identified) human inventor for a patent to be granted?

Do you agree that there is an intermediate position which allows for patent protection when a human contributes to devising an invention by making arrangements for an AI system to generate a new and non-obvious solution to a complex technical problem?

Please refer to the UKIPOs specific questions here: https://www.gov.uk/government/consultations/artificial-intelligence-and-intellectual-property-call-for-views/artificial-intelligence-call-for-views-patents and let me know if you wish to discuss your recommendations.

Harmonisation with EPO and USPTO, or a time for change?

This years decisions on AI-generated solutions at the EPO, USPTO, UKIPO and High Court of England and Wales1 were all interesting, but they show us how patent offices and courts are applying the current law rather than telling us whether that law needs to change. AA Thornton attorneys are very happy to discuss, explain and apply the current law, but the patent office consultations have a different purpose to allow stakeholders to guide those patent offices and government legislators on whether and how IP laws should be changed (1).

If you think the greatest prize is international harmonisation of laws, you may wish to contribute to WIPOs conversation on AI and IP. Earlier submissions are available here: https://www.wipo.int/about-ip/en/artificial_intelligence/conversation.html

Many WIPO member states and stakeholders are involved.

You may also wish to glance at the October 2020 report on the USPTOs consultation on artificial intelligence and IP policy. The report mentions that it is a priority of the USPTO to maintain US leadership in innovation in emerging technologies including AI, and to encourage further innovation. The UKIPO has the same objective.

The USPTO report is available here: https://www.uspto.gov/sites/default/files/documents/USPTO_AI-Report_2020-10-07.pdf

The majority of comments received by the USPTO suggested that current AI systems cannot invent without human intervention and that, while humans remain integral to the operation of AI, there is no urgency to modify current US IP laws. A lot of AI innovation is currently patentable in the US, and the USPTO report notes that human contributions may involve designing an AI algorithm, developing an AI system, implementing hardware that is adapted to process the algorithm, or preparing inputs to an AI algorithm i.e. they recognize various contributions that allow a human inventor to be named. The report then refers to US statutes and comments from the Federal Circuit courts as an explanation of current inventorship law.

A majority of comments submitted to the USPTO agreed that AI-related patent applications should be assessed as a subset of computer-implemented inventions (as is done at the EPO), and noted that USPTO guidance is available to help applicants and examiners to assess subject matter eligibility and disclosure requirements for computer-implemented inventions. We agree with this and have previously noted the consistency between some of the USPTOs 2019 guidance and examples within the EPOs Guidelines for Examination we believe there is a genuine opportunity for international harmonisation of patent law relating to AI and computer simulation and AI inventorship, because all major patent offices are facing the same issues at the same time.

Other comments received by the USPTO include concerns about enabling disclosure and the impact of AI on determining the knowledge of a person having ordinary skill in the art, and the potential proliferation of prior art issues that have also been noted in Europe.

However, the USPTO report seems to suggest that the question about whether US law needs to change was answered by many respondents by referring to current US law, rather than focussing on the needs of industry, so further industry input is desirable (a justification based on current law will always tend to maintain the status quo). Also, the report equates invention with artificial general intelligence (AGI) and this seems unnecessary. We are hearing from AI experts that their existing narrow AI systems can, once trained with vast amounts of domain-specific data, generate new and non-obvious solutions even when there is not an easily identified human deviser of an invention.

So there are companies that currently feel unable to apply for UK patent protection for AI-generated solutions to complex technical problems solutions that would have been patentable if devised solely by a human inventor, and some of which may be patentable in the US in view of a growing recognition of the different ways in which humans are contributing to inventions being made using AI systems.

We have also heard strong views that UK law and European Patent Office practice needs to change to allow patent protection for core AI technologies including machine learning algorithms that deliver technical advantages, instead of only the EPO-defined specific technical applications of those algorithms (with claims functionally limited to the particular technical purpose) and quite narrowly-defined specific technical implementations (where algorithms are adapted to take account of the capabilities or constraints of particular hardware). This is not the main focus of the UKIPOs consultation questions, but perhaps UK legislators can be encouraged to improve this situation via replies to the consultation?

We are hearing an increasing number of industry voices suggesting the need to review current legislation to resolve patentability and ownership issues for AI-generated inventions, to ensure that the patent system encourages investment in AI-based innovation and to remove the current expectation of future validity and ownership questions. Some industry leaders are happy for this conversation about AI and IP to proceed at a pace that will allow their AI experts, economists and IP directors to be fully consulted before IP laws are changed, and of course some AI-based disruptor companies are keen to see more rapid change.

We applaud the patent offices for consulting, since the best way to deal with the wide range of views is to give all stakeholders an opportunity to express them.

Similar to the US consultation, the UKIPOs call for views on AI and IP refers to the UK Governments ambition to encourage growth in transformational new technology sectors and remain at the forefront of the AI and data revolution. It includes a statement that the UKIPO wishes to make sure the UKs IP environment is adapted to accommodate AI technologies such as machine learning, which suggests an open mind about the possibility of legislative change. We are also open minded, and keen to hear from you.

Mike Jennings is a Member of the CIPA Computer Technology Committee, epi, AIPPI, and SACEPO working group on quality. The above article is not intended to represent views of CIPA, epi, AIPPI, the EPO or specific clients of AA Thornton.

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Call for industry views on AI and IP and ViCo - Lexology