Patentability of AI innovations
Examination standards – AI patent application strategies
Thanks to the rapid development of AI technology and continuous reflection on its commercial values, patent applications related to AI technology have become a hot topic. The number of AI-related applications is rising, while the scope of the application fields is expanding.
This chapter aims to provide some patent application strategies in the AI field based on the latest examination standards in China, summarising the similarities and differences between those standards in China, Japan, Korea, the United States and Europe.
Laws and coping strategies
In China the primary examination focus of a patent application relating to AI looks at whether the application is for an eligible object to be protected by a patent and whether its inventiveness is as provided in Article 22(3) of the Patent Law.
A patent application in the AI field may be drafted as a product claim or a method claim. A product claim may be drafted as an eligible subject, such as a system, device or storage medium.
Figure 1: General examination process of a patent application in AI field
Table 1: Forms of drafting claims
|Eligible subject||Example of drafting|
|Method claim||Method||A speech recognition method based on a deep neural network, comprising step 1 and step 2.|
|Product claim||Apparatus (device), system||A program module – a speech recognition apparatus based on a deep neural network, comprising module 1 configured to … (corresponding to step 1); and module 2 configured to … (corresponding to step 2). Memory plus a processor – a speech recognition apparatus based on a deep neural network, comprising a memory configured to store a computer program; and a processor configured to carry out the following steps when the computer program is executed:|
|Storage medium||A computer readable medium, including a computer readable program code, which will cause a computer to carry out the following steps:|
Examination standards and coping strategies
Latest examination standards on eligible object issues
Article 25(1), Item 2 of the Patent Law provides that a patent right will not be granted for rules and methods for mental activities.
The newly amended Guidelines for Examination provide that if a claim contains a technical feature in addition to an algorithm feature or a commercial rule and a method feature, the claim as a whole is not a rule and method of an intellectual activity. The possibility that it will be granted a patent right should not be excluded in accordance with Article 25(1), Item 2. Moreover, it is provided in Rule 22(2) of the Implementing Regulations of the Chinese Patent Law that “invention as mentioned in the Patent Law means any new technical solution relating to a product, a process or an improvement thereof”.
According to the guidelines, if, in a claim, the steps involved in an algorithm reflect that they are closely related to the technical problem to be solved (eg, data processed by the algorithm has definite technical meanings in the technical field), that execution of the algorithm can directly reflect a process of solving a technical problem by using natural laws, and produce a technical effect, then, in general, the solution defined in the claim belongs to the technical solution provided in Article 2(2) of the Patent Law.
Application strategy for eligible object issues
AI patent applications can be divided into two types according to their application scope:
- basic type patent applications; and
- applied type patent applications.
The ‘basic type’ patent application refers to the fact that an algorithm involved in the application may be widely used in multiple particular fields. The ‘applied type’ refers to the fact that an algorithm involved in the patent application is mainly combined with a particular field and is an application in this field.
Taking two aspects into account (ie, patent protection scope and conformity to examination requirements), there are a number of possible ways for drafting the two types of patent application.
Due to the development of the Internet and big data technology, AI technology is also being used increasingly in commercial and financial fields. In making an application for this type of patent, attention should be paid to combining a business rule, an algorithm feature and a technical feature in the description.
Moreover, based on a stage of technological improvement, an AI patent application may be divided into two stages:
- the training (or learning) stage; and
- the application stage.
Table 2: The different ways to draft a patent application
|Basic type||Applied type|
|Claim||Protected subject||Field is more generic||Field is more specific|
|Technical solution||Processed object (input data) – the input data has specific meanings and may be technical or non-technical data. Means of processing – combining an algorithm feature and a technical feature.|
Result of processing (output data) – a result of processing having a technical meaning.
|Processed object (input data) – the input data is specific data in a specific field.|
Means of processing – combining an algorithm feature and a technical feature.
Result of processing (output data) – a result of processing having a technical meaning.
|Description||Technical problem and technical effect||Attempt to summarise based on improvement on performance/ precision/efficiency.||A specific problem in a specific field.|
|Embodiment||Drafting multiple typical application examples regarding different specific application fields, and describing specific technical effects in various specific scenarios in embodiments.||Application examples in a specific field.|
Examination standard and coping strategy regarding inventiveness
Latest examination standards regarding inventiveness
According to the recently amended Guidelines for Examination, when examination of inventiveness is conducted for a patent application for an invention containing a technical and algorithm feature, or a business rule and a method feature, the algorithm feature or the business rule and method feature will be taken into account together with the technical feature as a whole, when they functionally and mutually support the technical feature and have an interactive relationship between themselves and the technical feature.
Application strategy for examination on inventiveness
Based on the above examination standards, when an application for an AI patent is drafted, attention should be paid to combining an algorithm feature and a technical feature when describing the technical solution. Moreover, in describing a technical problem and a technical effect, emphasis should be placed on the fact that the algorithm feature and the technical feature are specifically combined and jointly solve the technical problem and produce a corresponding technical effect.
Further, for some AI patent applications not involved in the improvement of a basic algorithm, any improvement is relative to the existing technologies in the application of an algorithm (eg, a neural network) to a specific field, while the neural network itself is not changed much. For this type of patent application, inventiveness may be considered based mainly on:
- whether the technical fields are similar; and
- the difficulty of applying the neural network to the technical field of the present application and whether a technical effect different from that in the original technical field is produced.
Table 3: Eligible subjects in two stages
|Training (learning) stage||A training apparatus/method for a model/neural network||A training apparatus/method for an image recognition model|
|Application stage||An apparatus/method for (a function)||An image recognition apparatus/method|
|Training stage and application stage||Both of the above||Both of the above|
Comparison of examination standards
Eligible object protected by a patent
For a comparison of examination standards of an eligible object protected by a patent in China, Japan, Korea, the United States and Europe, see Table 4.
Table 4: Examination of an eligible object protected by a patent in China, Japan, Korea, United States and Europe
|Subjects that can be protected||Requirements on technical solutions of claims|
|China||Must be applied to a specific field, and a combination of an algorithm feature and a technical feature should be reflected.|
|Japan||An implementation carried out specifically by using a hardware resource that is able to reflect that information processing is based on a computer and that it is an advanced creation of a technical idea using the natural law.|
|Korea||An information processing procedure of AI may be specifically carried out by hardware.|
Further, for an application for a patent for applying an AI technology for disease diagnosis, examination standards are appropriately relaxed.
|United States||A judgment method with reference to computerrelated applications for patents:|
|Europe||Similar to that in China, applied to a specific field, and an algorithm feature and a technical feature are combined.|
For a comparison of examination standards of inventiveness in China, Japan, Korea, the United States and Europe, see Table 5.
Table 5: Examination of inventiveness in China, Japan, Korea, United States and Europe
|General examination of inventiveness||Specialty of AI field|
|China||Based on a three-step method including:||An algorithm feature and a technical feature which are functionally and mutually supporting and have an interactive relationship to be taken into account as a whole.|
|Japan||Compare the present application with the closest reference to find out an identical technical feature and a distinguishing technical feature.|
Perform inference on the distinguishing technical feature.
|Examples of possessing no inventiveness:|
|Korea||Judge whether a person skilled in the art is able to easily obtain the invention concerned in the present application according to a reference prior to the present application and common general knowledge.||A judgment method with reference to computerrelated applications for a patent – considering technical difficulties of applications of a related technique in different fields, whether a solved problem is a common technical problem in the computer field and whether a produced effect is a common technical effect in the computer field.|
|United States||Determine a difference between a claimed invention and the prior art, analyse a level of a person of ordinary skill in the relevant field, and judge whether the difference is obvious with reference to objective evidence.||A judgment method with reference to computerrelated applications for patent – proposing an abstract concept issue together with an inventiveness issue, and after the problem of abstract concept is overcome by making amendments (eg, combining with a specific field), the problem of inventiveness may possibly be overcome at the same time.|
|Europe||Similar to the three-step method in China, adopt a problem-solution method, including three steps:||Similar to that in China, consider whether an algorithm feature makes a technical contribution.|
Patent applications in the AI field belong to patent applications involving computer programs, which must therefore meet the universal requirements for patent applications involving computer programs. Due to the specialised nature of AI technology, for patent applications in the AI field, the China National IP Administration has formulated new special examination regulations. Drafting patent applications and the responses to examination opinions based on the latest examination standards are beneficial to applicants in obtaining patent rights of relevant technologies in China.
In addition, understanding examination standards for patent applications in the AI field in major patent countries and regions in the world (eg, China, Japan, Korea, the United States and Europe) is advantageous to global application strategy formulation and reasonable patent layout of applicants.