Protecting AI solutions by IP rights often entails a combination of patents, agreements regarding data and use and development of systems and software, and software copyright. Patenting practices for AI solutions in particular appear to be facing significant changes in Europe.
Inventive step and person skilled in the art
An essential requirement for patentability is an inventive step, which aims to ensure that a novel technical solution is patented only when it differs enough from the prior art (ie, previously known products and methods). The inventive step, according to European practice, is assessed by determining the difference between the invention in question and the prior art and evaluating the significance of the difference. In general, the difference is significant enough if it is not obvious to a person skilled in the art. In addition to the inventive step, the description of an invention provided in the patent application must provide enough details that would enable the skilled person to implement the invention on the basis of the application.
Therefore, the person skilled in the art is a key player when assessing both the inventive step and the sufficiency of the provided description for the invention. According to European practice, the 'skilled person' is, in simple terms, a fictional character who knows everything about the relevant area of technology but is not adept at applying their knowledge to find new ways of solving tasks. However, the person skilled in the art is capable of routine types of work and can carry out experiments.
What is changing in AI patenting practice?
In European patenting practice, European Patent Office (EPO) decisions play a significant role and set directions. Decision T 0161/18 by the Boards of Appeal (BoA) of the EPO stated that the skilled person would be unable to train a neural network that was needed for the solution described in a patent application since the content of the application was insufficient. The BoA considered that the skilled person would need more information than was disclosed in the application to train the neural network. The decision was unfavourable for the applicant as the application had been filed back in 2005 and the missing information could no longer be added.
The EPO's longstanding practice for inventions has been to assess the inventive step of a presented solution by referring to what is "obvious to the person skilled in the art". If the presented solution is obvious to the skilled person, this means, in practice, that the office considers that the skilled person would have the knowledge and skills to end up with a solution by following the invention described in the application. The EPO examination guidelines provide general guidance on the level of knowledge and skills of the skilled person but no detailed definition of the different fields of technology exists.
The aforementioned BoA decision concerned the training of an AI solution, which is essentially a software-based invention. Therefore, it may be concluded that based on the level of capabilities of the skilled person not being sufficient to train the neural network, AI is understood by the EPO as a field of software technology in which the skilled person does not have the general level of skills and knowledge that an average software engineer otherwise has. Thus, the skilled person in AI appears not to be capable of designing a data set that could be used to train an AI solution. This suggests that there could be significant variation in the knowledge and skills of the skilled person between different fields of software technology.
On the other hand, the decision stated that a data set used for training the AI solution could have enabled a sufficient disclosure of the invention. Therefore, the description of the training method and the data set could be used to define an invention in a manner which would contribute to the inventive step.
In the future, adding a description of the training data set for implementing the invention should be kept in mind when drafting patent applications regarding AI solutions. There is also a positive message for patent applicants: it seems that the skilled person in the field of AI is not particularly highly skilled compared with what could be expected from a skilled person in the field of software. Could this mean that obtaining a patent for an AI solution is easier than for other software-based inventions? We do not yet know the answer to this question and estimating the long-term effects of the recent changes is difficult. Further EPO decisions will hopefully clarify the situation.
It is questionable whether the direction set by this decision is the right one. Can different requirements set for patenting AI solutions in comparison with other software-based solutions be justified? How can applicants prepare and react to the changing requirements?
Advice to applicants
Planning IP protection and having a strategy is always important. In the case of AI solutions, applicants should aim to be prepared for changes in patenting practice and differences between jurisdictions.
Careful drafting of a patent application helps to anticipate and manage changes in patenting practice. When patenting AI solutions in the future, applicants should ensure that their applications contain a description and an example of the training data set to enable sufficient disclosure of the invention.
No major changes can effectively be made to patent applications that are already pending. Instead, applicants must evaluate whether the description provided is sufficient and whether any changes can and should be made to obtain a patent.
Further, when protecting AI solutions, other forms of IP protection and agreement matters should be considered. Companies should take care of software copyright, trade secrets and rights to data sets both in agreements and in company practices. For example, when a training data set is described in a patent application, the description becomes public at the time of publication of the application. Thus, keeping in mind possible trade secrets regarding training data sets is essential. They are not necessarily a problem if presented suitably; seeking advice from patent professionals may help.
