Monday, 27th August, 2018

Computerised IP decision-making: Dream or reality?

Imagine how interesting (or daunting) it would be if a patent decision was made using computer programs. Well, that may soon be a reality in Australia.

On 28 March 2018, the Intellectual Property Laws Amendment (Productivity Commissions Response Part 1 and Other Measures) Bill 2018 (‘the Bill‘) was introduced to the House of Representatives. The Bill is currently before the Australian parliament for consideration.

Schedule 2 of the Bill will implement a number of measures to streamline and align the administration of the Australian IP system, and will implement a number of other IP law measures.

Schedule 2, Part 5 of the Bill relates to ‘computerised decision-making’ by IP Australia (although it is expected to be for cases where little or no human judgment is required). Specifically, this section of the Bill introduces number of amendments to the Patents Act, Designs Act, Plant Breeder’s Rights Act, and Trade Marks Act in order to enable the Commissioner and the Registrars to arrange for a computer program under their control to make decisions, exercise powers and comply with obligations under the legislation. If the Commissioner and Registrars are satisfied that the decision is incorrect, it also gives them the power to substitute any automated decision.

In terms of computerised decision-making, the table below summarises the main provisions and the specific part of each legislation for enacting those provisions:

Provisions Australian Patents Act 1990 Australian Designs Act 2003 Australian Plant Breeder's Rights Act 1994 Australian Trade Marks Act 1995
To enable the Commissioner/Registrar to use computer programs for any purposes for which he/she may, or must, make a decision, exercise any power or comply with any obligation, or do anything related to these actions. Where the Commissioner/Registrar uses a computer program for these purposes, he/she is taken to have made the decision, exercised the power or complied with the obligation. The action is to be treated in the same way as any similar action performed normally by the Commissioner/Registrar or a delegate of the Commissioner/Registrar. New section 223A  New section 135A New section 76B  New section 222A
To enable the Commissioner/Registrar to substitute a new decision for a decision made by a computer if he/she is satisfied that the decision made by the operation of the computer was incorrect. New section 223A(3) New section 135A(3) New subsection 76B(3) New subsection 222A(3)
To provide that a person may apply to the Administrative Appeals Tribunal (AAT) for review of a substituted decision if the person may apply to the AAT for review of the initial decision. Amended section 224 Amended section 136 Amended section 77 New subsection 222A(4)

 

According to the explanatory memorandum accompanying the legislative amendments, the administration of the Acts and Regulations currently require the Commissioner and Registrars to make a large number of decisions ranging from simple decisions requiring no discretion to complex decisions requiring judgement to be exercised. Currently, such tasks are delegated to employees of IP Australia.

The explanatory memorandum then mentions that the use of computerised and computer-assisted decision-making will improve the timeliness and accuracy of decision-making and enable staff to deal with more complicated matters.

‘Consequently, IP Australia intends to explore and use new technologies to deliver the high standard of service, which includes the ability to make decisions by computer program’ according to the explanatory memorandum.

Artificial intelligence (AI) is one of the hottest topics these days. AI is an algorithm that facilitates decision-making. There are already some decisions that computers are well-equipped to make in many sectors such as the healthcare sector that uses predictive analysis, the investment sector that uses trading bots and the digital marketing sector that uses A/B testing processes. Legal professionals are also increasingly making use of software that can perform complex tasks such as searching for concepts rather than simple keywords.

Therefore, it can be envisaged how computerised decision-making can be useful for the operations of IP Australia.

Nonetheless, it is equally important to remember that AI at the moment is successful, but in bounded situations. In terms of AI, we are still in a transition phase where we are beginning to transition from a human-centric approach to a more automated approach.

For decision-making, which is basically a cognitive process that results in a particular course of action among several other possibilities, there is currently no particular algorithm or easy formula to determine the right or wrong decision. Although some decision-making may only involve simple analysis and can be relatively less complex, high-level decision-making often requires judgement, strategy, intuition and creative thought, and even with the current AI technology, it is still challenging to fully automate a high-level decision-making process.

Even though the intention behind the proposed amendments to the legislation is to allow for computerised decision-making for simple decisions that require no judgement and only a simple analysis of undisputed facts, it cannot be ignored that a case which was initially anticipated to be requiring only a simple analysis was, in fact, a complex case or could develop into a complex case. Hence, if the Bill transitions into law, it will be interesting to see how and where a boundary line will be set in order to separate simple decisions that can be made using a computer from the high-level decisions that currently need to be made by a human. Also, if a complex case was initially misjudged as a simple one and a computer has already made or attempted to make a decision on such case, then that can potentially lead to a highly complicated/undesired situation for both applicant/patentee and IP Australia.

The Bill does seem to acknowledge that computerised decision-making may not be 100% reliant as it has a provision to allow the Commissioner/Registrar to substitute a decision for a decision made by a computer program if he/she is satisfied that the decision made by the operation of the computer was incorrect. However, there still seems to be ambiguity as to whether or not the applicant/IP owner has the right to simply request the Commissioner/Registrar to reconsider any unsatisfactory decision made by non-human without having to go through a process of appealing to the AAT.

It will be interesting to see how this matter progresses in due course. We will report on any future developments.