By akademiotoelektronik, 16/08/2022

The impact of artificial intelligence on patent law

This graph, published in December 2020 by the European Patent Office (OEB - EPO in English) in a report entitled "Patents and fourth industrial revolution" [1], highlights two phenomena.The first is the very high increase in the number of FBIs linked to contemporary technologies, and this worldwide.The second remark that these figures call is that this upward trend of patents linked to the 4th industrial revolution touches - with a different magnitude, certainly - all the most developed countries.We will therefore question the consequences of the development of AI on patent law.To what extent does the development of AI push for a reinterpretation, even a reassessment, of the criteria of patentability?It should first be specified what is meant by artificial intelligence, and to recall the legal framework applicable to patents.

Reminders on AI and Patents

Artificial intelligence

The Robert dictionary offers us the following definition: artificial intelligence defines "all the theories and techniques developing complex IT programs capable of simulating certain features of human intelligence" [2].AI is therefore based on many disciplines, such as statistics, mathematics, mastery of computer language, etc..This versatility makes AI a very complex area to define and isolate from other.

Certain strategic sectors such as construction, transport, or even communication are already won over by artificial intelligence.This list is not exhaustive, because AI is increasingly present in all areas of the economy, including those in appearance foreign to new technologies such as the legal sector.For this reason, the question of patentability on the one hand of artificial intelligence, but also of the creations it generates, is of paramount importance.Indeed, it is a question of protecting the investment, which involves a clear legal framework concerning the protection of inventions in this new context [3].

Licences

The patent enjoys a precise legal definition, and of a text governing it on a European scale: the Convention on the European Patent, written by the European Patent Office [4].A patent can be obtained for any invention, product or process, in all technological fields [5].Since AI is recognized as a technological domain, it seems to constitute a patentable object.We will see that reality is more complex than that.

Patentability conditions

The object of the patent can be "any invention in all technological fields" [6].For an invention to be protected, this must fulfill three very specific patentability criteria defined in article 52 of the European patent agreement, in addition to criteria for compliance with public order and good morals [7].First, the invention must constitute a novelty.In other words, it should not be "understood in the state of the technique" [8].This implies non-disclosure to the public before the date of the patent filing [9].Second, the invention must be subject to industrial application.In other words, the invention must be able to be exploited.The possibility of being manufactured or used implies that these operations are described with sufficient details in the request, to allow an application in the industry [10].Third, the object must take on an inventive character [11]: it must not arise from the state of the technique obviously for the businessman.The businessman is a fictitious person, defined as having knowledge and the average capacities of the sector in question.The businessman is "the man who serves as a reference in patent law, in order to assess the inventive character and the sufficiency of the description of a patent" [12].To assess respect for the condition of inventiveness, the OEB adopts a reasoning in three stages: to determine the state of the technique, to identify the technical problem, to determine if the business man would actually have reached the invention.The term "actually" means that the possibility for the businessman to obtain the invention subject to a patent application is not enough [13].

The major changes made by AI in the field of patents

Recent developments in artificial intelligence challenge patent law on two.First, the question of the patentability of the AI itself arose.Second, what about the creations generated by artificial intelligence?This second question has become central because this kind of innovation multiplies.Indeed, some AI have the capacity to generate solutions to technical problems faster, and in greater numbers than humans [14].How to define if an invention linked to artificial intelligence is patentable?Does the convention suffice to define a clear and relevant legal framework with regard to artificial intelligence?Is AI an area like any other, which should confront the same rules?

The qualification of "invention"

The European reference text, the European Patent Convention, clearly states the patentability exemptions.In particular, what interests us here is mentioned in article 52.The latter notably provides that "computer programs" cannot be subject to patent because they are not considered inventions.The algorithms therefore seem, in the light of this text, excluded in fact from the field of patents.But despite this apparently clear statement, a doubt over the patentability of algorithms, for two reasons.

First, the article never evokes algorithms as such, complicating its understanding when it comes to artificial intelligence.Second, can algorithms reasonably be considered “computer programs”?Defining algorithms, some of which can be very complex and inventiveness, as simple computer programs may seem like a little too fast.The EPO specifies on its site that "the inventions involving software is not excluded from patentability if they have a technical character" [15].

Faced with this vagueness, the OEB publishes its “Guidelines for Examination” [16] - Guidelines -, a set of texts offering keys to reading the Convention.The Office specifies the spirit in which the Convention has been written, and thus makes it possible to clarify certain gray areas.In recent versions, the guidelines shed light on the patentability of artificial intelligence, and also evoke "machine learning".Thus, in their November 2019 version, the OEB decided: algorithms and machine learning, keystone of artificial intelligence, are considered to be mathematical in nature.However, mathematical models are excluded from the patentability field.Logic would like algorithms therefore deprived of patents.No patent for AI, then?Not really.Indeed, it is possible to bypass this impossibility, if the mathematical method is clearly used in order to solve a specific technical problem.The OEB takes for example a mathematical method which, applied, allows you to develop a steel cooling technique.

It emerges from the previous paragraph that a prohibition of principle exists in terms of patentability of artificial intelligence, but that it can be bypassed in certain cases.What about the creations generated by these artificial intelligences?Certain conditions had to be adapted and reinterpreted in the face of the new context.

The inventive nature in the case of an AI

The first difficulty in the event of a patent filing on a creation generated by an artificial intelligence is the condition of the inventive nature.Today, the general knowledge of the businessman understand the different automation and optimization tools, and therefore artificial intelligences [17].With the use of new technologies, the place of humans in the creative process is redefined.It is sometimes reduced to determining the objective to be achieved for artificial intelligence or simply to enter the data necessary to allow it to find a solution to a technical problem [18].In this context, it could be argued that the man by business with average knowledge would necessarily come to the solution thanks to the use of technologies at its disposal.Consequently, a solution generated by an artificial intelligence would be deprived of inventive character.

However, to deprive a technical solution of the condition of inventiveness, the businessman must necessarily come to this technical solution using the tools at his disposal.In other words, the possibility for the businessman to find the technical solution is not sufficient to deprive this solution of the inventiveness condition.Indeed, the European Patent Office recalls that "the existence of a technical possibility and the absence of obstacles are only the conditions necessary for the execution of the invention.They are not sufficient to make obvious for the man of the profession which can actually be achieved ”[19].

Rather than being denied, the condition of the inventive character has been redefined.For example, decisions T0073/85 [20] and T192/82 [21] of the OEB specify that the selection of parameters of the algorithm which made it possible to find the technical solution must be taken into account to assess patentability thissolution.Indeed, the inventive nature of a solution generated by an algorithm depends directly on the inventive nature of the choice of parameters operating this algorithm.If the combination of parameters is considered non-evident for the businessman, then the condition of the inventive nature will be fulfilled.

Consequently, the inventive character is not immediately excluded for the creations generated by artificial intelligences.The standards in this area have adapted to the new context, taking into account new elements to determine the inventive nature of a technical solution [22].

How to analyze the applicability of an invention linked to artificial intelligence?

Obtaining a patent for a creation generated by an artificial intelligence can pose difficulties in terms of formal conditions, in particular on the precise description condition of the invention.This condition requires that the invention be described in a sufficiently clear and complete manner so that it can be used and executed by a person in the business.In this way, the condition joins the condition of industrial applicability of the patent, which requires that the invention can be used in the industry by a person in the profession [23].

Artificial intelligence is based on algorithms that evolve quickly and change over time.In this context, it is sometimes difficult to describe how the solution to the technical problem was found.Indeed, it happens that "the input" and "the output" of artificial intelligence are known, but that the logic and the stages allowing the solution to be blurred.Indeed, the so -called “strong” AIs, from machine learning, sometimes produce effective and surprising results.However, the method used by artificial intelligence to achieve this result, or in other words its precise internal functioning, remains mysterious.This effect is commonly called the "black box" effect [24].Consequently, the condition of precise description of the patent may, in certain cases, cause difficulties.

The question of the holder of the patent

When artificial intelligence generates a creation, the third question that arises is that of the holder of the patent.In this regard, Article 58 of the European Patent Convention provides that "any natural or legal person and any company assimilated to a legal person under the law which it is may request a European patent".This article presents the risk that an artificial intelligence is “assimilated to a legal person” thus allowing artificial intelligences to hold a patent.

To avoid any misunderstanding the OEB, in its decision n ° 18 275 163.6 of January 27, 2020, refused the holder of the patent to artificial intelligence named Dabus [25].The patent depositor has identified artificial intelligence Dabus as inventor based on the aforementioned convention, which does not impose that the inventor is a natural person.The depositor adds that the objective is only to identify the inventor, and that it is therefore important that the public is correctly informed.

For its analysis, the OEB relied on articles 81 and 19 of the agreement which specifies that when the depositor is not the inventor, article 19 requires to enter his family name, first name and exact address.Therefore, indicating the name of creative artificial intelligence is not enough to meet this requirement.To justify his reasoning, the OEB adds that the name of a natural person gives him rights, which is not the case for the name of an object.

The OEB specifies that artificial intelligences are not to date holders of legal personality, and therefore unable to exercise the rights arising from the holder of the patent.Furthermore, since artificial intelligence is devoid of rights, its owner cannot be considered as his own right.Thus, by its decision, the OEB refuses to artificial intelligences the possibility of holding a patent [26].Consequently, in the case of a creation generated by an artificial intelligence, there will be a dissociation between the inventor and the patent holder.Three types of people have been identified as being able to hold the patent in place of the AI;It is the owner of artificial intelligence, the one who made the AI operate in order to obtain the invention (therefore its user) or the AI programmer [27].

Furthermore, the question of legal personality given to artificial intelligences was raised by the European Parliament in 2017 [28].In its resolution, the Parliament invoked the idea of creating a particular legal personality for robots, in order to allow the most sophisticated of them to be considered as responsible and holder of certain rights [29].However, this proposal was the subject of strong criticism.

Despite certain difficulties, the creations generated by artificial intelligence can be patented under certain conditions.With the rapid developments of artificial intelligence, there are more and more “creative ia”, thus generating a growing number of potentially patentable creations.In this context, the advantages can be considerable because the AI are faster and sometimes more efficient than humans.The new creators will be able to offer many progress, especially in sectors characterized by their complexity, such as nanotechnologies or biotechnologies23.

However, preservation of the public domain and free competition is essential, because copying and inspiration contribute to technical progress and stimulates competition.The underlying risk of the protection of all the creations generated by AI thanks to the patent, is to precisely lose the advantages that the use of artificial intelligences can offer us.Indeed, AIs are faster and often more efficient than humans to find technical solutions.In this context, patent all the inventions generated by AI would help create a market saturated by patents, not leaving a room for maneuver to take advantage of the performance of these artificial intelligences.

In conclusion, this new context will probably push a balance between investment protection and competition protection.The question of holder seems to us to be one of the main questions raised by the appearance of artificial intelligence in the field of patents, in the sense that patent a large number of inventions related to artificial intelligence can lead,In the case of very efficient artificial intelligences, to attribute patents to algorithms.This practice, treated in the European Parliament, could go against the very principle of patents if it were to materialize, insofar as the latter are intended to be living, to be the subject of operating contracts,and not to be in the hands of a non-human entity, unable to exploit a patent as a human would do.

Chronicle "Law, lawyer and practice of increased law"

The aim of this column is to deal with current events relating to this transformation.In a context where digital, big data and data analytics, machine learning and artificial intelligence transform in depth and lastingly the practice of law, creating "increased jurists" but also calling an "increased right" with regard toissues and new business models carried by digital.

With its increased Law Institute, the Edhec Business School has a major asset to position the knowledge, skills and function of the lawyer at the center of business transformations and the company.It is defined around 3 axes of strategic development: its offer of hybrid training, its useful research in the law industry, its legal talent management platform.https: // www.Edhec.edu/fr/lEdhec-augmented-law-institute

FBI: Families of international patents.Each FBI contains all patent applications filed in several countries by the author of a single invention. 4RI : 4^e Révolution Industrielle (terme provenant de Klaus Schwab [1]http://documents.epo.Org/Projects/Babylon/Eponet.NSF/0/06E4D8F7A2D6C2E1C125863900517B888/$ file/patents_and_the_fourth_industrial_revolution_study_2020_executif_summary_fr.PDF [2] https: // dictionary.lerobert.com/definition/intelligence [3] IP Trust, « Intelligence artificielle, propriété intellectuelle et enjeux éthiques » (disponible :https: // www.iptrust.fr/intelligence-artificial-proprietal-intellectual-and-enjeux-ethics/) [4] http: // documents.epo.Org/Projects/Babylon/Eponet.NSF/0/B415FE40DAEEEC60C125864600479CB3/$ FILE/EPC_20TH_Edition_2020_fr.PDF [5] Article 27 of the applications of intellectual property rights which affect trade.[6] Article 52, (1), of the European Patent Convention.[7] Article 53, a), of the European Patent Convention.[8] Article 54 of the European Patent Convention.[9] Guide to the European patent, p.21 (available: http: // documents.epo.Org/Projects/Babylon/Eponet.NSF/0/8266ED03666190630C12575E10051F40E/$ file/How_To_Get_A_european_Patent_2020_fr.PDF).[10] Guide to the European patent, p.34 (available: http: // documents.epo.Org/Projects/Babylon/Eponet.NSF/0/8266ED03666190630C12575E10051F40E/$ file/How_To_Get_A_european_Patent_2020_fr.PDF).[11] Article 56 of the European Patent Convention.[12] Quantic Avocats, http: // www.Quantic-Avocats.com/lexicon-de-la-prropriete-intellectual/man-du-metier/#: ~: text = man%20du%20m%C3%A9tier%20est, the%20des registration%20brevet.&text=L'homme%20du%20m%C3%A9tier%20est%20d%C3%A9fini%20par%20la%20jurisprudence%20comme,discipline%20concern%C3%A9e%20par%20l'invention.[13] Guide to the European patent, p.22 (Available: http: // documents.epo.Org/Projects/Babylon/Eponet.NSF/0/8266ED03666190630C12575E10051F40E/$ file/How_To_Get_A_european_Patent_2020_fr.PDF).[14] Erica Fraser, "Computer As Inventors-Legal and Policy Implications of Artificial Intelligence on Paten Law" (Available: https: // script-ed.Org/Article/Computers-As-Inventors-Legal-And-Policy-Implications-Of-Artificial-Intelligence-On-Patent-Law/).[15] “Inventions Involving Software are excluded from Patentaibility as long asy have a technical character” (https: // www.epo.Org/News-Events/in-Focus/ICT/Artificial-Intelligence.HTML) [16] http: // documents.epo.Org/Projects/Babylon/Eponet.NSF/0/8654640290C2DBE7C12584A4004D2D9A/$ file/EPO_GUIDELINES_FOR_Examination_2019_Hyperlinked_Showing_modifications_en.PDF [17] Erica Fraser, op cit. [18] OMPI Magazine, « The artificial Inventor Project » (disponible :https: // www.wipo.int/wipo_magazine/fr/2019/06/article_0002.HTML);Camille Aubin, "Artificial Intelligence and Patents", p.960 (available: https: // cpi.Openum.CA/Files/Sites/66/9.-intelligence-artificial-et-brevets.PDF) . [19] Décision T61/90 de l'Office Européen des Brevets (disponible :https: // www.epo.Org/Law-Practice/Legal-Texts/HTML/Caselaw/2019/F/CLR_I_D_5.HTM). [20] Décision T0073/85 de l'Office Européen des Brevets (disponible :https: // www.epo.Org/Law-Practice/Case-Law-Adppes/Recent/T820192EP1.HTML). [21] Décision T192/82 de l'Office Européen des Brevets (disponible :https: // www.epo.Org/Law-Practice/Case-Law-Adppes/Recent/T820192FP1.HTML).[22] Ramalho Ana, "Patentability of Ai-Generaled Inventions: Is A Reform of the Patent System Needed?", P.21 (Available: File: /// C:/USERS/User/Downloads/SSRN-ID3168703%20 (1).PDF).[23] Guide to the European patent, p.34 (available: http: // documents.epo.Org/Projects/Babylon/Eponet.NSF/0/8266ED03666190630C12575E10051F40E/$ file/How_To_Get_A_european_Patent_2020_fr.PDF).[24] Virtue advice, "Fearing the black box effect?»(Available: http: // www.virtuoconseil.com/Portfolio/Intelligence-artificial-Doit-on-Craindre-leffet-Boite-Noire/) [25] Decision n ° 18 275 163.6, 27 janvier 2020, de l'Office Européen des Brevets (disponible :https: // www.epo.Org/News-Events/News/2020/20200128.HTML).[26] J.P Karsenty&Associés, « La machine DABUS ne peut valablement être désignée en tant qu'inventeur, ou la question de la qualité d'inventeur d'un algorithme » (disponible : http://www.JPKARSENTY.com/pateb-oeb-la-machine-dabus-ne.HTML).[27] Example from Canadian law: Sandy Caron, “Protection of creations generated by AI in Canadian copyright” (Available: https: // corpus.Ulaval.ca/jspui/bitstream/20.500.11794/34501/1/34836.PDF). [28] Résolution du Parlement européen du 16 février 2017 contenant des recommandations à la Commission concernant des règles de droit civil sur la robotique (2015/2103(INL)) (disponible :https: // www.Europarl.europa.EU/DOCEO/Document/TA-8-2017-0051_FR.HTML).[29] https: // eye.secure.Europarl.europa.Eu/eye/Popups/Summary.do?id=1477231&t=d&l=fr.