Artificial intelligence (AI) has been the subject of human fascination and awe (and Hollywood movies) for many years. Who can forget the iconic scene in 2001: A Space Odyssey when the intelligent computer HAL 9000 says “I’m sorry Dave, I’m afraid I can’t do that,” and refuses to allow Dave to re-enter the pod bay doors because HAL knows that Dave is planning to disconnect it (him?). AI is busy learning, growing, computing, and in some cases inventing, all while we sleep.
It is therefore no surprise that the patentability of AI is a current focus of many innovators and Patent Offices around the world. Recent decisions and practice in Canada, the UK and Europe, bring into sharp focus the unique challenges of protecting these innovations. Below we consider some of the foibles of the AI-related patent practices of these jurisdictions.
Amazon’s One-Click Patent
The patentability of computer-implemented inventions in Canada has been evolving since the early 2000’s, when Amazon’s patent application for what is known as its “one-click” internet shopping solution, which covered the automation of several steps ordinarily involved in placing an online shopping order on its website, was rejected by the Commissioner of Patents as lacking patentable subject matter. The Federal Court allowed Amazon’s appeal, and the Federal Court of Appeal agreed, concluding that the Commissioner of Patents was required to purposively construe the claims to identify essential elements and thereby the alleged invention (which it had not done), and consider whether the invention (i) had a method of practical application; (ii) was a new and inventive method of applying skill and knowledge; and (iii) had a commercially useful result. The matter was referred back to the Commissioner, who ultimately granted Amazon’s “one-click” patent.
The Patent Office’s Problem-Solution
Shortly thereafter, the Canadian Patent Office issued notices to the profession establishing that claim construction was to be focused on identification of the “problem-solution” the invention addressed. As a result, Patent Office examiners were able to ignore elements of claims from construction if those elements were not essential to accomplishing the solution or provided “context” to the claim (e.g., a computer). In so doing, the Patent Office could (and did) designate AI-related claims as being directed to ineligible subject matter. Earlier this year, several patent applications for computer-related inventions were found to lack patentable subject matter because the examiners concluded the computers were not essential elements or simply provided working environments for data analysis.
The Federal Court rejects the Problem-Solution Test
However, a recent Federal Court decision criticized the Patent Office’s “problem-solution” claim construction approach, holding it was failing to apply the purposive construction test established by the Supreme Court of Canada. The invention at issue covered a “computer implementation of a new method for selecting and weighing investment portfolio assets that minimizes risk without impacting returns”. Despite the claim language explicitly including a computer, the Patent Office found that the invention lacked subject matter patentability because the Office deemed the computer non-essential based on the problem-solution test.
The Federal Court reviewed and discarded the “problem-solution” test as incorrect, and reiterated that purposive construction is required to assess the essential elements of a claim to identify the claimed invention. It also observed that the Commissioner had failed to explain why she had excluded computer processing as a solution. The Court then sent the application back to the Patent Office for reassessment. The Patent Office did not appeal the Court’s decision.
CIPO Updates its Patentable Subject Matter Guidance
Instead, the Canadian Intellectual Property Office released new guidance on patentable subject matter in response to the Choueifaty decision, which specifies that “if [a] computer merely processes [an] algorithm in a well-known manner and the processing of the algorithm on the computer does not solve any problem in the functioning of the computer, the computer and the algorithm do not form part of a single actual invention that solves a problem related to the manual or productive arts” and the claim is therefore unpatentable.
The Takeaway for AI Inventions
Accordingly, it seems that (at least for now) AI-related inventions employing a computer programmed to execute an algorithm, where the result has no physical existence or does not manifest a discernable physical effect or change (e.g., the generation or display of data) will likely still be difficult to protect. However, if the AI-related inventions are employed in technical fields where the end result is physical and tangible (e.g., the control of an external process, improving the functioning of computers), they will likely be patentable.
United Kingdom and Europe
Across the Atlantic, the situation is a little more settled. It is well established in UK and European case law that AI inventions can be patented if they provide a “technical” contribution. The law in the UK and Europe specifies that computer programs and mathematical methods “as such” are not patentable. However, over a number of years, the case law has evolved to define the meaning of “as such”, and it is now generally recognised in both European and UK law that an invention that essentially lies in novel mathematics but that is configured to control a technical process, for example an anti-lock braking system, would be considered to have technical character, and so would not be considered to be a computer program “as such”. In contrast, a computer program for providing a non-technical process, for example providing a personalised shopping itinerary, would likely not be considered as having technical character.
The EPO and UK courts however disagree on how to correctly assess patentability for software-based inventions and there is divergence in the practices of the EPO and UKIPO in this area. While the UK courts have indicated that the outcome from the two approaches is the same, many practitioners in the UK will say it is easier to obtain a patent to a software-based invention at the EPO than it is at the UKIPO.
The EPO Approach
The EPO consider AI-related inventions to generally relate to computational models that have an abstract mathematical nature. Therefore, in order to patent an AI-related invention in Europe (e.g., a software based mathematical method), it must find technical character from outside the computational model itself. The EPO have published guidance for assessing whether or not such an invention has technical character; a mathematical method may contribute to the technical character of an invention if the method is either, (i) applied to a field of technology, or is (ii) adapted to a specific technical implementation. Thus, novel and inventive AI innovations that are applied to well-defined technical fields as provided for under option (i), such as image/speech processing, data encoding/encryption, optimising load distribution in a computer network, or controlling a physical process (e.g., robotic arm, self driving car, etc.) would likely be patentable. Similarly, AI inventions that are adapted to a specific technical implementation as provided under option (ii), such as the adaptation of a polynomial reduction algorithm to exploit word-size shifts matched to the word size of the computer hardware, would also likely be patentable.
If, however, an AI-related invention does not satisfy option (i) or option (ii), the EPO will likely consider it to lack technical character. It is worth noting that the mere fact that an AI’s invention can be executed on physical hardware is not enough to demonstrate that it has technical character. Rather, the method itself must provide some technical contribution to be patentable.
The UKIPO Approach
Like the EPO, the UKIPO also considers AI-related inventions to be related to software-based mathematical models. Again, like the EPO, if the UKIPO deem an AI-related invention to provide a technical contribution, the invention should not be excluded from patentability. To determine if a technical contribution is made, the UKIPO considers five signposts (known as the “AT&T signposts”) that may hint at a technical contribution, which can be broadly summarized as whether the invention (i) provides a technical effect outside of the computer, (ii) means that a computer operates in a different way, and (iii) overcomes a perceived problem or merely circumvents said problem. Generally, AI inventions related to image processing or the control of an external process (e.g., a robotic arm) are not excluded from patentability. Similarly, AI-related inventions that operate at the level of the architecture of the computer, or that make a computer operate in a new way are also generally not excluded from patentability. However, if none of the AT&T signposts are satisfied, generally the invention will not be patentable; the mere fact that an AI invention can be executed on physical hardware is not enough to demonstrate that the invention has technical character.
Would Mr. Choueifaty’s invention be patentable in the UK or Europe?
The subject of Mr. Choueifaty’s invention, described above, generally relates to a method involving tradeable financial assets. In the UK or Europe, the tradeable financial assets themselves will generally be considered non-technical and the method would therefore only be patentable if the method was judged to have technical character lying outside of that data. For example, if the invention lay in a novel encryption method for sending trading data between servers securely, this could provide the required technical character. However, if the effect of the invention was judged to be solely solving a business related problem, for example relating to improvements in how much money is made through the trading, such a method would likely not be considered by the EPO and UKIPO to have technical character.