Patent Examination Practices regarding AI-Related Inventions: Comparison in the EPO, USPTO and JPO

Abstract

With the advent of the so-called Fourth Industrial Revolution, AI-related technologies are beginning to be applied in a variety of fields. In addition, the number of patent applications for AI-related inventions is increasing rapidly as AI-related technologies are implemented in society. Under these circumstances, it would be of great value to thoroughly investigate the current state of AI-related inventions in Europe, the United States, and Japan. Therefore, in this paper, I focus on the current status of examination practices of AI-related inventions in Japan, the U.S. and Europe, and discuss future issues.

First, the latest guidelines/cases regarding Computer Implemented Software (CII) are scrutinized since AI related inventions are subcategories of CII and these guidelines are generally applied to them as well.

Although each patent office has established examination guidelines for CII, AI-related inventions may have different characteristics from the conventional CII, and so there are cases where it is difficult to apply them to the conventional guidelines for CII as they are. Therefore, second, I have clarified how the various patent offices have responded to this situation by analyzing the latest precedents, guidelines, and movements in legal reform. In addition, in order to deepen the understanding of the examination practices of each patent office regarding AI-related inventions, some case studies were conducted and future issues were extracted.

Keywords: AI, AI-related inventions, Patent Law, Patent examination, Eligibility, Inventive step, Problem-Solution Approach, Comparative study