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October 14, 2020

Artificial Intelligence Created Inventions In India – Whether Patentable?

Author: Krithika Muthuraman

Artificial Intelligence (AI), over decades of innovation and development, has evolved to a stage of complete autonomy, i.e. to a stage of decision-making without the need for any human intervention. In addition to simplifying complex tasks, this autonomy has also contributed to growth in AI technology’s role from mere creations to creators of Intellectual Property. This growing role of AI in the field of Intellectual Property has, in recent times, most notably been highlighted in the “WIPO Conversation on Intellectual Property (IP) and Artificial Intelligence (AI)”.

Among the various identified issues, was the status of AI-created inventions and their inventorship under the current patent regime. In addition to the status of inventorship, it would also be beneficial to first understand if an AI-created invention would be included as patentable under The Patents Act, 1970.

What are ‘Inventions’?

Section 2(j) of The Patents Act, 1970, defines ‘invention’ as “a new product or process involving an inventive step and capable of industrial application”.

Section 2(ja) of the Act further defines ‘inventive step’ as “a feature of an invention that involves technical advance as compared to the existing knowledge or having economic significance or both and that makes the invention not obvious to a person skilled in the art”. (emphasis supplied)

Section 2(ac) of the Act states “capable of industrial application in relation to an invention, means that the invention is capable of being made or used in an industry”.

Section 2(l) of the Act defines a ‘new invention’ as “any invention or technology which has not been anticipated by publication in any document or used in the country or elsewhere in the world before the date of filing of patent application with complete specification, i.e., the subject matter has not fallen in public domain or that it does not form part of the state of the art. (emphasis supplied)

What inventions can be patented?

While The Patents Act, 1970 does not provide an exhaustive list of what constitutes patentable subject matter, the essential requirements for patentability, as inferred from the above definitions are – Novelty, Utility and Non-obviousness. The requirements of ‘Novelty’ and ‘Utility’ have been recognized as fundamental to Patent law by the Supreme Court of India in Biswanath Prasad Radhey Shyam vs Hindustan Metal Industries[1].

Section 3 of the Act, does however, expressly exclude certain categories from the scope of ‘invention’. The relevant excerpt of the  provision states:

“The following are not inventions within the meaning of this Act,—

…(k) a mathematical or business method or a computer programme per se or algorithms…”. (emphasis supplied)

The nature and scope of the bar/exclusion of algorithms under Section 3(k) of the Act has been clarified by the Delhi High Court in its decision in Telefonktiebolaget LM Ericsson (PUBL) vs. Lava International Ltd.[2], where it observed that “This bar of Section 3(k) does not apply when in a patent involving modern day technology, algorithms are employed in order to perform certain calculations or selections which are thereafter utilized by various hardware components or elements to produce/improve a technology and create a practical effect or result in a physical realization.”

A similar view was also taken by the Delhi High Court in the landmark judgement of Ferid Allani v. Union of India & Ors.[3], where it was observed that, “In today’s digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions – simply for that reason.”

Further clarifying the scope of the provision, the Court in Allani also held “Across the world, patent offices have tested patent applications in this field of innovation, on the fulcrum of ‘technical effect’ and ‘technical contribution’. If the invention demonstrates a ‘technical effect’ or a ‘technical contribution’ it is patentable even though it may be based on a computer program”.

In addition to the above, the Office of the Controller General of Patents, Designs and Trade marks issued Guidelines for Examination of Computer Related Inventions (CRIs), 2017 which also provide specific definitions to technical terms not defined under the Act, and the procedure for examination of applications for CRIs.

Who can apply for a Patent?

Under Section 6 of the Act, “an application for a patent for an invention may be made by any of the following persons, that is to say,—

(a) by any person claiming to be the true and first inventor of the invention;

(b) by any person being the assignee of the person claiming to be the true and first inventor in respect of the right to make such an application;

(c) by the legal representative of any deceased person who immediately before his death was entitled to make such an application.

(2) An application under sub-section (1) may be made by any of the persons referred to therein either alone or jointly with any other person.”

Section 2(s) of the Act, defines ‘person’ as including the Government. The above definition would, therefore, include natural as well as legal persons.

AI Systems & Inventorship – Position in India and other jurisdictions

AI Systems, although recognized as legal persons in some parts of the world, have not yet universally been granted personhood. In view of this, AI Systems cannot currently be named as inventors in patent applications under the current regime.

Additionally, the Patent regime of certain jurisdictions like the European Union also have the requirement that an inventor designated in an application must be a human being and not a machine. Citing this as a requirement under the European Patent Convention, the European Patent Office (EPO) refused two applications [4] filed before it, designating the AI System DABUS as an inventor.

In refusing the applications, the EPO observed “…the designation of an inventor is mandatory as it bears a series of legal consequences, notably to ensure that the designated inventor is the legitimate one and that he or she can benefit from rights linked to this status. To exercise these rights, the inventor must have a legal personality that AI systems or machines do not enjoy.”

The USPTO has also adopted a similar stance, in denying a patent application designating the AI System DABUS as an inventor [5] in respect of ‘Devices and Methods for Attracting Enhanced Attention’.  In doing so, it also emphasized on the requirement of an inventor being a human being.

Conclusion

In view of the above, inventions that meet the essential criteria of the Act, even if created by AI Systems would not be barred from the scope of patentability. However, the current regime does not recognize personhood of AI Systems. Until the time that this is expressly addressed, AI Systems cannot be designated as inventors in patent applications.

[1] AIR 1982 SC 1444

[2] 2016 (65) PTC 556[Del]

[3] 2020 (81) PTC 489[Del]

[4] Patent Application # EP3564144, Patent Application # EP3563896

[5] USPTO Patent Application 16524350

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

Copyright: ALG India Law Offices LLP.

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