2019 International Conference on Robots & Intelligent System (ICRIS)
The Influence of Artificial Intelligence Development on Patent Legislation
Hu Shuijing
Shanghai University of Political Science and Law, Shanghai, 201701 China
husj_11@163.com
Abstract—The artificial intelligence technology has brought
unprecedented challenges to today's ethical standards, legal
rules, social order and public management systems. In terms
of Patent law, the main challenge is the patent eligibility of the
artificial intelligence invention. Since inventions in the field of
artificial intelligence include methods for implementing mental
steps using computers and devices designed to automate
mental steps, the implicit requirements for judging patent
eligibility may be inconsistent with the nature of artificial
intelligence technology. However, due to the importance of
artificial intelligence to social development, many countries
have begun to revise patent examination guidelines related
patent-eligibility criteria to address the challenges of artificial
intelligence.
Keywords-Artificial Intelligence; Computer Technology;
Machine Learning； Patent Eligibility
I. INTRODUCTION
“AI is the new electricity. I can hardly imagine an
industry which is not going to be transformed by AI.” said
Andrew Ng, CEO, Landing AI and deep learning.AI,
California, US, speaking via video call. The emergence of
the artificial intelligence revolution has brought
unprecedented challenges to today's ethical standards, legal
rules, social order and public management systems. It not
only conflicts with the existing legal order, but also
highlights the defects of the supply of legal system products,
and even subverts the legal cognition that we have formed.
In terms of Patent law, the main challenge is the patent
eligibility of the artificial intelligence invention.
II. TRENDS OF ARTIFICIAL INTELLIGENCE PATENT
A. Artificial Intelligence
Artificial intelligence is the ability of machines to
execute functions that generally are associated with human
intelligence. Psychological activities performed by artificial
intelligence techniques include cognitive and analytical
activities. They include problem solving, perception
patterns, understanding language, answering questions,
proving theorems, and learning from experience.
Machine learning is a core part of artificial intelligence.
Learning without any kind of supervision requires an ability
to identify patterns in streams of inputs, whereas learning
with adequate supervision involves classification and
numerical regressions. Classification determines the
category an object belongs to and regression deals with
obtaining a set of numerical input or output examples,
thereby discovering functions enabling the generation of
suitable outputs from respective inputs. Mathematical
analysis of machine learning algorithms and their
978-1-7281-2632-6/19/$31.00 ©2019 IEEE
DOI 10.1109/ICRIS.2019.00036
performance is a well-defined branch of theoretical
computer science often referred to as computational
learning theory. Machine learning is used to make
predictions to improve patient care, avoid credit card fraud,
manage financial portfolios, etc.
Deep learning is a specific approach used for building
and training neural networks, which are considered highly
promising decision-making nodes. An algorithm is
considered to be deep if the input data is passed through a
series of non-linearities or nonlinear transformations before
it becomes output. In contrast, most modern machine
learning algorithms are considered "shallow" because the
input can only go only a few levels of subroutine calling.
Deep learning makes training the neural network easier and
faster, and it can yield a better result that advances the field
of artificial intelligence.
B. Key Technology Overview
This study analyzes the IPC codes of related patents in
the field of artificial intelligence in the past 15 years. The
patent data come form the patent database Questel Orbit.
The frequency codes with high frequency indicate that the
corresponding technology categories are hotspots in the field
of artificial intelligence. Figure 1 shows the artificial
intelligence related patents from 2004 to 2018 as the data
source. Those key technology are: Computer
technology(4914), It methods for
management(1607), Control (1583), Digital
communication (975) , Measurement (830) , Telecommunic
ations (672) , Medical
technology (485) , Handling (434) , Furniture, games (430),
Electrical machinery, apparatus, energy (389),
Transport (346) , Audio-visual technology (320), Other
special machines (273), Civil engineering (163) , Other
consumer goods (135), Thermal processes and
apparatus (134) , Machine tools (115), Analysis of
biological materials (102), Chemical engineering (102),
Engines, pumps, turbines (79) , Optics (78) , Environmental
technology (73), Mechanical elements (61), Materials,
metallurgy (60) , Biotechnology (54), Basic communication
processes (49), Food chemistry (47) , Semiconductors (38),
Textile and paper machines (32), Macro-molecular
chemistry, polymers (27), Basic materials
chemistry (25) , Pharmaceuticals (19), Surface technology,
coating (15) , Organic fine chemistry (11) , Micro-structure
and nano-technology (10).
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Figure 1. Key Technology Overview
C. AI application fields
According to WIPO report (IPW, WIPO, 31 January
2019), many sectors and industries are exploring the
commercial exploitation of AI. Twenty application fields
were identified in the present analysis and at least one was
mentioned in 62 percent of the total identified AI patent
data. In AI patent application fields, the top industries are
telecommunications (15 percent of all AI-related patents),
transportation (15 percent), and life and medical sciences
(12 percent), and personal devices, computing and
human – computer interaction (HCI) (11 percent). Other
sectors featuring in the results include banking;
entertainment; security; industry and manufacturing;
agriculture; and networks (including social networks, smart
cities and the Internet of things). Growing industries are
transportation, agriculture, and computing in government,
with annual growth rates of at least 30 percent between
2013 and 2016.
III. PATENT ELIGIBILITY OF ARTIFICIAL INTELLIGENCE
Patent law protects inventions. Patent law is designed to
encourage inventors by offering the incentive of a limited-
time monopoly on the technology. There are many
conditions that a patent applicant must fulfill to obtain a
patent. First, the invention must be a "subject matter" that
can be patented. This requirement is called the “ patent
eligibility ” requirement. In addition, the invention must be
"novel", and "non-obvious" . Furthermore, to be patent
eligible subject matter, an invention must meet some criteria.
The representation of criteria for patent eligibility vary from
country to country. For instance, in the US patent law to be
patent eligible subject matter, an invention must meet two
criteria. First, it must fall within one of the four statutory
categories of acceptable subject matter: process, machine,
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manufacture, or composition of matter. Second, it must not
be directed to subject matter encompassing a judicially
recognized exception: laws of nature, physical phenomena,
and abstract ideas (35 U.S.C. 101). And in the European
Patent Convention to be patent eligible subject matter, an
invention must satisfy the provisions of Article 52 of the law.
Article 52 provides that “ (1) European patents shall be
granted for any inventions, in all fields of technology,
provided that they are new, involve an inventive step and are
susceptible of industrial application.(2) The following in
particular shall not be regarded as inventions within the
meaning of paragraph 1:(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.(3) Paragraph 2
shall exclude the patent ability of the subject-matter or
activities referred to therein only to the extent to which a
European patent application or European patent relates to
such subject-matter or activities as such.”
Inventions in the field of artificial intelligence include
methods for implementing mental steps using computers and
devices designed to automate mental steps. Section 101 does
not state whether the methods and equipment for
implementing the mental steps are eligible for patent . The
Supreme Court of the united States held that patents cannot
protect mental processes, abstract intellectual concepts, and
natural phenomena.
Artificial intelligence technology may be heading in an
opposite direction from the inclinations associated with
patent eligibility and the mental steps doctrine should be
taken with great care in the area of artificial intelligence
inventions.For example, inventions applying complex
algorithms should not be directly identified as mental steps,
especially if cannot be implemented in real life, or humans
cannot achieve similar effects. If there is enough time, a
sufficient number of pencils and a large enough stack of
paper, humans can theoretically replicate some of the
claimed artificial intelligence methods. However, in many
cases, humans cannot complete their work at the right cost or
with the necessary accuracy in a reasonable amount of time,
and cannot replace the work of intelligent computer systems.
In these cases, it may be erroneous to conclude that the
computer system is merely performing a mental step or its
equivalent.
This means, the implicit requirements for judging patent
eligibility may be inconsistent with the nature of artificial
intelligence technology. This potential conflict is disturbing
because, due to the inherent nature of the technology, if the
artificial intelligence invention fails to actually meet the
requirements of the patent review, these inventions will
inevitably be excluded from patent protection. Artificial
intelligence technology cannot be adequately protected
under current patent review rules. United States and Chinese
patent practitioners this week called for considerations to
change patent legislation and allow patenting algorithms in
the future.
 IV. NEW TRENDS IN THE PATENT ELIGIBILITY
LEGISLATION OF ARTIFICIAL INTELLIGENCE
A. The United States of America
On January 7, 2019, the U.S. Patent and Trademark
Office published updated examination guidance, instructing
the examining corps and the PTAB how they should apply
35 U.S.C. 101. On the same day, the USPTO also released
the latest in its series of examples of how to apply the
Article 101 to examine a application.
Prior to this, the most influential decision for artificial
intelligence inventions may occur in the case of Alice Corp.
v. CLS Bank International(2014) . The Alice case a decision
of the United States Supreme Court about patent eligibility.
The case involves a patent for a computerized method of
financial transaction systems. When only one party is
financial, this method can reduce the “ settlement risk ”
exchange agreement to fulfill its obligations. The method
proposes to use a computer system as a third-party
intermediary to facilitate financial obligations between the
parties. The US Supreme Court ruled that the two-step test
established by Mayo governed all subject matter of patent
eligibility. In particular, for the background of abstract
concepts, the Supreme Court established the two-step
framework for computerized invention patent eligibility.
The Alice decision was considered as a huge setback
for the application of patent eligibility subject matter rule to
computerized invention. It was a broad, categorical
exclusion of certain inventions that were deemed “directed
to” an abstract idea,natural phenomenon, or law of nature.
To clearly distinguish between patent-eligible subject
matter and subject matter falling within a judicial exception,
the USPTO revised its examination procedure with respect
to the Alice/Mayo test. The 2019 Revised Patent Subject
Matter Eligibility Guidance focuses on two major changes
to the first step of the Alice / Mayo test.
First, the Revised Guidance expounds that abstract ideas
can be grouped as, e.g., mathematical concepts, certain
methods of organizing human activity, and mental processes:
a) Mathematical concepts – mathematical relationships,
mathematical formulas or equations, mathematical
calculations;b) Certain methods of organizing human
activity – fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial
or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing
personal behavior or relationships or interactions between
people (including social activities, teaching, and following
rules or instructions); c) Mental processes – concepts
performed in the human mind14 (including an observation,
evaluation, judgment, opinion).
Second, this guidance explains that a patent claim or
patent application claim that recites a judicial exception is
not “ directed to ” the judicial exception if the judicial
exception is integrated into a practical application of the
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judicial exception. A claim that recites a judicial exception,
but is not integrated into a practical application, is directed to
the judicial exception under Step 2A and must then be
evaluated under Step 2B (inventive concept) to determine
the subject matter eligibility of the claim.
The new Guidance has a very positive impact on AI
patents, which has paved the way for more legal certainty. It
will lead to even more AI patents and will inspire more AI
related inventions.
B. The European Patent Convention
On 1 November 2018 ,the EPO updated official
guidelines came into effect. This is the first time, the
European Patent Office published guidelines on the patent
eligibility of artificial intelligence (AI) and machine learning
(ML) technologies. The new guidelines defines AI and ML
as "based on computational models and algorithms for
classification, clustering, regression, and dimensionality
reduction, such as neural networks, genetic algorithms,
support vector machines, k-means, kernel regression, and
discriminant analysis."
As the guidelines provide, these models and algorithms
“are per se of an abstract mathematical nature, irrespective
of whether they can be ‘trained’ based on training data”,
the guidance concerning mathematical methods – which are
generally excluded from patent-eligible subject. According
to the updated guidelines, an AI or ML invention should be
applied to an actual technical problem in order to become
eligible for patent protection, “If a claim is directed either
to a method involving the use of technical means (e.g. a
computer) or to a device, its subject-matter has a technical
character as a whole and is thus not excluded from
patentability under Art. 52(2) and (3)”. This means that if
an AI or ML invention has a technical impact on an actual
problem it may be patent eligible under EU patent law.
To further clarify the difference between technical
purposes and non-technical purposes, the new guidelines
give two examples of AI and ML: “ For example, the use
of a neural network in a heart-monitoring apparatus for the
purpose of identifying irregular heartbeats makes a technical
contribution. The classification of digital images, videos,
audio or speech signals based on low-level features (e.g.
edges or pixel attributes for images) are further typical
technical applications of classification algorithms. ” In
contrast, “ Classifying text documents solely in respect of
their textual content is however not regarded to be per se a
technical purpose but a linguistic one (T 1358/09).
Classifying abstract data records or even
"telecommunication network data records" without any
indication of a technical use being made of the resulting
classification is also not per se a technical purpose, even if
the classification algorithm may be considered to have
valuable mathematical properties such as robustness (T
1784/06).”
Whether the new Guidelines will make patenting AI and
ML inventions as such easier in Europe is difficult to say yet.
At least, it provides welcome confirmation that the EPO is
open to allowing inventions which relate to the use of
computer-implemented technology. The updated guidelines
provide application standards for applicants' reference.
provide criteria for AI and ML patent that applicants may
use to assess the possibility that a given application will pass
muster under the EPO’s examine.
C. China
To stimulate the incentives for computer-related
innovations, the CNIPA ( China National Intellectual
Property Administration) revised its Examination Guidelines
for Patents, which came into force from April 1, 2017.
The new revisions related to AI include the patent
eligibility of computer software and business method.
Software patents
For computer-implemented inventions, the Guidelines
emphasis (Part II, Chapter 9, Section 2) that "Computer
program per se" is different from "inventions relating to
computer program". The former belongs to rules and
methods for mental activities and is ineligible for patent
protection, while the latter is patentable. A software claim
may be drafted in a form of "medium plus computer
program process" or as an apparatus claim including a
component implemented by a computer program.
Under the revised Guidelines, software claims such as
"a computer program product", "a machine-readable
medium", and "an apparatus comprising a processor
configured to execute instructions on a computer-readable
medium to perform steps of ..." shall become patent-eligible.
Business Method Inventions
For business method-related inventions the new
Guidelines state (Part II, Chapter 1, Section 4) that “If a
claim relating to business model includes not only business
rules or methods, but also a technical feature, it should not
be excluded from being patentable under Article 25 of the
Chinese Patent Law.”
Previously classified as a "mental activity", business
method inventions were excluded from patent protection.
Even though business method per se is still not eligible for
patent under the revised Guidelines, a window is opened. An
invention related to business method is usually implemented
by software in practice, and viewed to include technical
features.
There is no doubt that, the updated guidelines relaxed
barriers to obtaining patents to AI inventions in China.
V. CONCLUSION
The emergence of the artificial intelligence revolution
has brought unprecedented challenges to today's ethical
standards, legal rules, social order and public management
systems. The implicit requirements for judging patent
eligibility may be inconsistent with the nature of artificial
intelligence technology. To address the challenges of
artificial intelligence, many countries have begun to revise
patent examination guidelines related patent-eligibility
criteria. Whether these new Guidelines will make
patenting AI inventions as such easier in these
countries is difficult to say yet. At least, a window is
opened.
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