International Patent Office Guidance on Artificial Intelligence Inventions

19 Pages Posted: 30 May 2024

Date Written: May 15, 2024

Abstract

In response to the rapid rise of artificial intelligence (AI), major patent offices around the world are issuing rules regarding the inventorship of and the patentability requirements (subject matter eligibility, novelty, inventive step, and sufficiency of disclosure) for AI inventions, the use of AI tools in patent practice, the impact of generative AI on prior art, and how AI affects the “person having ordinary skill in the art” (PHOSITA) standard. This article summarizes the most recent directives from the IP5 jurisdictions: the People’s Republic of China, Europe, Japan, the Republic of Korea, and the United States.

China’s revised guidelines expand patent claim categories for computer-related innovations and clarify that AI and big data algorithms that enhance computer system performance or user experience are pertinent to subject matter eligibility and inventiveness assessments. Europe issued new provisions for AI patents, requiring detailed disclosure of machine learning algorithms and the characteristics of the training data affecting the technical effect of an algorithm, but not requiring the training data itself. Japan added new case examples for AI-related technologies, highlighting the eligibility of methods that integrate software and hardware, the sufficiency of disclosing data correlations, and requirements for non-obviousness. Korea’s updated guidelines stress the detailed disclosure of AI implementation, such as a correlation between input and output data in trained models, and explain that inventive step is assessed based on the technical features and unexpected effects of AI training data, modeling, and applications in specific fields. The U.S. clarifies that while AI cannot be an inventor, it can be used in the conception or reduction to practice of an innovation, with patent protection contingent on a natural person’s substantial contribution to the inventive process. Further U.S. guidance focuses on the ethical use of AI in patent practice, emphasizing the duty of candor and verification of AI-generated documents, the disclosure of AI’s role in drafting if material to patentability, and the responsibility for AI-assisted filings and maintaining confidentiality. Finally, the U.S. is seeking public input on the impact of generative AI on prior art and the PHOSITA standard, addressing the challenges AI-generated content poses to patentability assessments and the potential shift in the non-obviousness and enablement requirements due to AI integration in the inventive process.

Keywords: artificial intelligence, patent law, patent office, IP5, CNIPA, EPO, JPO, KIPO, USPTO

Suggested Citation

Hou, Stephen M., International Patent Office Guidance on Artificial Intelligence Inventions (May 15, 2024). Available at SSRN: https://ssrn.com/abstract=4843648 or http://dx.doi.org/10.2139/ssrn.4843648

Stephen M. Hou (Contact Author)

American Patent Agency PC ( email )

187 Pearl St
CAMBRIDGE, MA MA 02139
United States

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