Article first published in Managing Intellectual Property, Europe IP Focus 2019

“My logic is undeniable” states the Artificial Intelligence supercomputer (VIKI) in the movie “I, Robot”. This may well be so, in the future! But how does AI fit into today’s IP?

To us, it is clear that AI is here to stay! It has been here for decades and it has been studied for just as long. At least the term “Artificial Intelligence” has been around since 1956[1]. The increasing use and adaption of AI is also likely to change the way we live, the way we work and what we work with.

The beauty of AI has allured us since the publication of the cult classic “I, Robot” by Isaac Asimov, and we are now more fascinated than ever when it comes to the relationship between AI and IP. There is a multitude of existential questions that arise out of this relationship, such as “Who created what?”, “What is creativity?” and “Who is responsible?”. It is also clear that AI will change how we work with and even view IP. However, the question that we face in our everyday work is how creators of AI can legally safeguard their creations to ensure that they can benefit from their intellectual endeavors. In the following, we will try to illuminate some of the issues facing AI creators seeking to patent AI in Europe and how these issues can be managed.

Firstly, let’s define what we mean by AI. For the purpose of this article, we define AI broadly, namely as the reason why and how a device can perceive its environment, analyze what it has perceived by applying “intelligence” and take actions which aim to maximise the device’s objectives. More technically, this means that the device has been programmed with a number of mathematical models and rules which, when applied in response to stimuli, make the device carry out a task based on a number of decisions. The recent rapid development of AI and its coming closer to the public is the result of a number of technical breakthroughs: faster processing ability, higher bandwidth for communication and masses of data gathered through sensors and other sources of data such as social media. The general idea of AI may have been available previously even in quite some detail. However, it is only when the aforementioned technical breakthroughs reach a critical mass and are combined with AI that we can actually truly start benefiting from AI.

“Intelligence” according to the Oxford English Dictionary is “the ability to acquire and apply knowledge and skills.” [2] Thus, the concept of the AI’s “intelligence” may be difficult to harness in a patent application or to recite in the patent claims, which means that the patent application may suffer from not providing an enabling disclosure and the claims may lack the required clarity. The problem will be ever more present if the AI, in exercising its intelligence, will evolve its intelligence. How could an attorney describe something that has yet to be evolved and who would be considered the inventor of the evolved AI? For the purpose of this article, however, we will leave such issues aside and focus on the European Patent Office’s view on AI inventions. Pursuant to the Office’s view, once the AI invention is sufficiently captured in the description and claims of a European patent application, there are two additional hurdles to overcome before patentability can be established, as described below.

The First Hurdle: Article 52(2) of the European Patent Convention:

Art. 52(2) of the EPC stipulates that the following shall not be considered as inventions:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;

(d) presentations of information.

AI can, correctly, be described as a mathematical method or a collection of algorithms based on mathematical models. An essential part of AI, a neural network, is an algorithm implemented as a program for a computer and it may – depending on its application – be considered to be a scheme, a set of rules or a method for performing mental acts, playing games or doing business. As such, Art. 52(2) EPC may be perceived as a bar against patenting AI. However, a very important addition is made in Art. 52(3) EPC, namely, that the bar is only applied against European patents and patent applications which relate “to such subject-matter or activities as such”. Two words make all the difference: “as such”. These words are the portal through which AI inventions may be considered as inventions, thereby overcoming the first hurdle raised by the European Patent Office. The combined result of Art. 52(2) and Art. 52(3) EPC is that the bar is only applied against European patent applications aiming to patent AI as such and in its most abstract form. Consequently, if the AI invention is brought into a technical setting, such as being tied to a technical device such as a self-driving car or a computer, the AI invention, in that form, will not be considered as AI “as such” but rather as a technical device using AI and will therefore overcome the aforementioned hurdle.

The second hurdle – Articles 54 and 56 of the European Patent Convention:

Once the AI invention has been safely placed in the technical – and therefore patentable – domain, the next hurdle is to determine whether the AI invention is novel and inventive, as required by Art. 54 and 56 EPC. For an AI invention, or any invention for that matter, in order to be considered novel and inventive, its contribution to the state of the art must be technical. In other words, the invention as defined by the patent claims must be technically, and sufficiently, different from what was known on the filing or priority date of the European patent application. If a patent claim only differentiates an invention through non-technical features, such as e.g. aesthetic features, it is not, under the EPC, considered to be novel (or inventive). Herein lies the particular problem for AI inventions. As mentioned above, AI can, in essence, be categorized under one or more of the headings excluded from patentability under Art. 52(2) EPC, and can therefore be considered as non-technical. If an AI invention only contributes to the state of the art in a non-technical manner, e.g. by providing a more robust mathematical method, it will not be considered as novel or inventive. The consequence of this is that in order for an AI invention to be patentable, it must contribute to the technical field in a manner which exceeds a strictly non-technical contribution.

However, the features of an invention which are non-technical when considered in isolation may actually contribute, and often do contribute, to the technical character of the invention. This is key to the patentability of AI inventions. For instance, if a particular mathematical method is used to analyze a signal received to reduce noise, the non-technical feature (the particular mathematical method) does contribute to the technical character of the invention by allowing the invention to reduce noise. In contrast, if the AI is clearly contained within a non-technical field, for instance a method for doing business, and merely brought into the technical domain by being implemented by a computer, the resulting invention will not be deemed as possessing the required novelty and will therefore not be patentable, since it will be differentiated from the state of the art merely by non-technical features, i.e. a business method. An algorithm generating a sequence of data may also provide a technical contribution; if the output quantity differs from input quantity, a technical contribution is present. As such, an algorithm used to interpret a gray scale image input to image quality, an algorithm transforming an input of text into speech or an algorithm interpreting an image portion as an obstacle in an automotive vision camera are likely to be considered technical since the algorithm in the specific application solves a technical problem. Simply put, an algorithm or a mathematical model implemented as a computer program when applied to a technical problem takes on a technical character and can be taken into account in the assessment of inventive step.

In the following, we will provide two examples which we hope will illuminate the current state of law in Europe:

A computer implemented business method using AI

In our first example a patent claim is drawn to a computer which receives offers and demands from users and matches these offers and demands using novel AI, based on a new and advanced self-learning algorithm, which compares the information contained in the offers, the demands and various user information such as rating, location, etc. The AI matches the received offers with the received demands. In this instance, the AI invention is technical in the sense that it is implemented by a computer. However, the matching of offers and demands based on the information contained in the offers and demands and the various user information is clearly a business method. As such, the contribution to the state of the art is non-technical and the invention is not patentable.

A self-driving car using AI

In our second example we take a patent claim drawn to a self-driving car using AI to analyse input from the various sensors of the car and comparing this input with historic data. Due to the new algorithm of the AI, the AI is better than existing solutions at predicting when the input from the various sensors indicates that the road may be slippery and is thereby able to adapt its driving accordingly and minimize the risk for accidents. In this instance the invention is technical because it is a technical device (i.e. the car) using AI. The feature that, when viewed in isolation, is non-technical – i.e. the algorithm – does also contribute to the technical nature of the invention since it contributes to the improved driving of the car. As such, the contribution is technical and the invention is therefore patentable.

The patentability of AI inventions may seem problematic from the outset and perhaps even impossible. However, in our view and based on our experience, once AI can be sufficiently described and put into use in a technical context, the subject matter falls within the patentable domain and will be tried against the state of the art for novelty and inventive step as for any other invention. In fact, the European Patent Office has recently updated its Guidelines for Examination with a section dedicated to AI in which European Patent Office clearly states that AI and related algorithms should serve a technical purpose in order to be patentable, thereby allowing protection of new inventions within this technical era. Creators of AI have no reason to surrender to the exclusion of AI as such from the patentable domain.