How to Register AI Patents in Asia Pacific and Europe: Dos and Don’ts

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The lack of harmonization when it comes to the patentability of AI-related inventions makes registering rights in this space more difficult. As rapid technological progress, by its very nature, must drive legislation, this leaves a significant amount of innovation in the gray area when it comes to conservation. First edition of Review of Patent Prosecution Explores the hottest issues facing IP professionals around the world, revealing the latest obstacles facing applicants in Australia, China, Europe and South Korea, as well as in these jurisdictions. How to ensure success

Patenting computer-implemented inventions in Australia and at the EPO

Do: Highlight technological advantages and issues in the state of the art in Australia.

While Australian case law regarding computer-implemented method of invention development continues to evolve, current Australian Patent Office practice “typically involves identifying the subject matter of the claimed invention (ie, the invention (art), and determining whether the substance is within their established principles of not being a patentable invention or outside the existing concepts of the method of manufacture”, Karen Rae Heilbron-Lee, According to Jacqueline Chelyabin and Damon Henshaw of Superson & Ferguson (see “Australia: Computer-related inventions, patent term extensions and tougher examination trends”).

He recommends that applicants in Australia highlight the technical advantages and technical problems in the state of the art and include detailed technical descriptions of the invention in their patent specification.

Don’t: Don’t be discouraged by patent challenges at the EPO.

The EPO attaches great importance to the term ‘technology’, and imports from it the requirement that the invention be ‘technical’ or have a ‘technical character’, according to James Short, Simon Binney, Howard Sands and Howard Sands of Boltwood Tennant. Jason Paley says. See “Expert Expert Chapter: Patenting Computer-Implemented Inventions at the EPO”). However, the EPO’s definition of ‘technical’ deviates somewhat from the definition in common use. “In fact, the EPO clearly avoids defining what is technical, even though it knows 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, devising rules and regulations for performing mental operations and mathematical procedures, which are often the core of a computer program, There is no technical pursuit.

He warned that the innovation step “is the barrier that causes the most problems for computer-implemented inventions”. Specific case law has developed on technicalities in machine learning, simulations and graphical user interfaces – and this vast corpus of decisions can be intimidating. However, the assessment of the inventive step at the EPO for any computer-implemented invention “can be considered as a general application of the well-known ‘problem and solution’ approach”. Although a number of problems often arise, Short, Binney, Sands and Paley insist that “prosecution can be greatly simplified if they are considered during the early drafting process”.

They warn that “drafting is almost always an opportunity to ‘get it right’, and practitioners and applicants will need many years to live with the decisions made here”.

Although registering such inventions at the EPO seems difficult given the long list of failed attempts reported in case law and the seemingly complex requirements to achieve this. “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. “

In offering their predictions about future EPO practice in this area, Short, Benny, Sands and Paley expect that – if it is considered – the EPO will “continue to examine such cases. And it will be fair.” “European patents should be granted for innovative enhancements to basic AI and ML technology, while simply applying known techniques to new problems can be difficult.” AI and machine learning are the main driving forces that could lead to the next technological revolution. For innovators in these fields, strong and effective IP protection is essential. “This often involves the need to obtain patents that are not only in first contact with the patent office but also strong enough to withstand post-grant challenges and subsequent litigation.”

Assessing the viability of AI applications in China and the question of inventiveness in South Korea

Do: Get a thorough understanding of China’s exam guidelines.

A new section of China’s revised patent examination guidelines now provides “detailed rules for the examination of patent applications.” [AI, Internet Plus, Big Data and blockchain] And it aims to standardize the examination standards for such applications,” reports Xiaoqin Zhao, Qiang Lin and Xiaobin Zhong of Beijing East IP (see “Expert chapter: How to assess the patentability of AI inventions in China “).

The China National IP Administration has emphasized 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. has been done “Such a settlement will be examined in a manner that ensures that all the material in the claim is taken as a whole,” he says. It aims to analyze “the technical means involved, the technical problems solved and the technical effects achieved”, rather than breaking the claim down to examine separate technical features and algorithmic features or features of business principles and practices. .

According to current practice in China, “a relatively narrow standard is used in evaluating whether a claim falls under the rules and practices of mental activities set forth in Article 25(1)”.

For AI patent candidates, “as long as the claim contains a technical feature or features, it can generally pass the test”. However, the ‘three elements of technology’ test, a relatively high threshold, is also applied to determine whether a claim constitutes a technological solution, so it is important that applicants reconsider Have a deep understanding of the established guidelines.

Don’t: Underestimate South Korea’s dispute resolution practices amid lack of inventiveness.

Unlike the law in some jurisdictions, the Korean Patent Act does not clearly define the term ‘inventor,’ revealed Young-Bo Shim and Dong Hwan Kim of Lee International IP & Law (see ” South Korea: I.P. Glimpses to Office Debs Repeal Position AI Inventor”). Instead, Article 2(1) defines ‘invention’ as “the most advanced creation of a technical idea applying the laws of nature”. As far as the person entitled to register is concerned, Article 33 states that “a person who makes an invention or his successor is entitled to a patent under this Act”.

In the Korean IP Office’s (KIPO) cancellation of the DABUS application – Steven Thaler’s application to designate an AI platform as an inventor – it found “the legal requirements for an inventor, which “The need for AI to have legal personality is highlighted”, Shim and Kim state. They contend that this condition can be fulfilled by revising the Civil Act. “Furthermore, KIPO stressed the need to ensure international harmonization, especially considering that major foreign patent offices have not yet recognized AI inventors.”

Shim and Kim state that although the KIPO and the Seoul Administrative Court have determined that an inventor must have legal capacity, the determination of ownership related to the right to obtain a patent “does not fall within the scope of the formal examination process.” “, say Shim and Kim. Instead, such matters are usually resolved through negotiation between the parties involved. “Well-established legal mechanisms for resolving disputes between holders of unencumbered rights offer a means of effectively resolving disputes over ownership,” he says. Is.

Shum and Kim are wary of the rapid pace of technological development, which “often outpaces the development of relevant laws and policies, inevitably leading to gaps and challenges”. They suggest that in order to narrow these gaps, how legal interpretations are made should be comprehensively considered. It “must be geared towards promoting technological progress, while reducing legal gaps, ultimately benefiting human development”. He stresses that effectively navigating technological advances while maintaining legal stability will require setting a proper precedent in South Korea allowing AI to be designated as an inventor.

gave Overview of IAM Patent Prosecution was published in November 2023 and takes a broad view of the best strategies for obtaining patents in the key regions of the Americas, Asia Pacific and Europe, the Middle East and Africa. An overview can be accessed. Here.

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