Artificial intelligence (AI) technology has been reportedly making new breakthroughs and is expected to be an important driving force for scientific and technological innovation in various industries. In parallel with this trend, the number of related patent applications has also increased in many jurisdictions, including China.
This article explores patent applications for AI related inventions in China according to the recent guidelines from the China National Intellectual Property Administration (CNIPA) [1].
AI related patent applications
AI related patent applications can be divided into two categories according to the different "roles" played by AI in innovations:
- Innovations in which AI itself is a component of the innovations. This category can be subdivided into “patent applications involving AI algorithms or models themselves” and “patent applications involving functions or field applications based on AI algorithms or models”.
- Innovations assisted by AI or made by AI independently. This category can be subdivided into “patent applications involving inventions assisted by AI (with substantial contribution of a natural person)” and “patent applications involving inventions generated by AI (without substantial contribution of a natural person)”.
Eligible inventors
Article 14 of the Implementing Regulations of the Chinese Patent Law (taking effect from 20 January 2024) stipulates that an ‘inventor’ refers to a person who makes creative contributions to the essential features of an invention.
Moreover, 4.1.2 of Chapter 1 of Part I of CNIPA’s Patent Examination Guidelines stipulates, relevantly, that:
“The inventor should be an individual. The application should not include the name of an organisation or collective, or the name of the artificial intelligence.”
Therefore, only the individual(s) making substantial contribution to AI related inventions can be named inventor(s). For “patent applications involving inventions generated by AI”, AI such as DABUS cannot be named an inventor.[2].
Eligible patent solutions
An AI related invention in a patent application needs to meet at least two requirements to become an eligible patent solution. The first requirement is that the invention does not fall into rules and methods for mental activities. Provided that the body of a patent claim comprises not only rules and methods for mental activities but also technical feature(s), this requirement should be deemed to be met.
The second requirement is that the invention adopts technical means utilising the laws of nature to solve a technical problem and thereby achieves a corresponding technical effect in compliance with the laws of nature.
Although there might not be accurate definitions as to what is “technical means utilising the laws of nature”, “technical problem” or “technical effect in compliance with the laws of nature”, the guidelines provide several non-limiting examples to illustrate whether the second requirement is met.
- Example 1: What AI algorithms or models need to process is data with specific technical meanings in the relevant technical field, such as identifying and categorising image data.
- Example 2: There are specific technical connections between AI algorithms or models and the internal structure of computer systems, such as interplay or corporation between these two parts on a technical implementation level, for example to reduce data storage or data transmission or increase hardware processing speed. It is important to note that the specific technical connection is not necessarily a change to computer hardware structure(s) and can be certain improvement on internal performance of the computer systems.
- Example 3: Big data in specific application fields is mined for inherent correlations that conform to the laws of nature based on AI algorithms. For example, based on the entity data related to food safety risks at individual timings, a preset neural network is trained to predict the food safety risks at a timing to be predicted.
Sufficiency of Description
Algorithms and models in an AI related invention may be quite complex and therefore tedious to detail each aspect in the description of the AI related patent application. However, at least for the portion that contributes over the prior art, the description should clearly and completely describe the underlying technical means to enable a person skilled in the art to carry out the invention.
Inventive step
This aspect is closely related to the above topic “Eligible patent solutions” in that “technical means utilising the laws of nature”, “technical problem” and/or “technical effect in compliance with the laws of nature” are still important factors in the subsequent determination of inventive step of an AI related invention.
Specifically, algorithm features in the AI related invention can play a part in determining inventive step only when they are closely combined with technical features in the invention, together forming technical means to solve a certain technical problem and achieve the corresponding technical effect. For example, the algorithm features and the technical features together contribute to determination of a robot's stability or falling direction. If the whole solution including these features is determined to be non-obvious over the prior art, the invention can pass the test of inventive step.
Conclusion
AI related patent applications should be drafted in view of the above aspects to get through patent office examination, to allowance. Of course, the application of AI related patents needs to comply with the requirements of relevant national laws and should not violate social ethics or harm public interests. More decisions of the Courts are expected to supply definitive answers to the emerging ethical issues.
If you would like to know more about AI related patent protection in China, please reach out to your usual AJ Park contact.
[1] https://www.cnipa.gov.cn/art/2024/12/31/art_66_196988.html
[2] https://www.cnipa.gov.cn/art/2024/8/13/art_2648_194171.html
