Artificial Intelligence and Patenting in India in light of Global Trends

Spread the word

The recent 161st Report of the Parliament Standing Committee on Commerce acknowledged the overwhelming impact of Artificial Intelligence and allied technologies on the economy and the need for an efficient intellectual property protection framework to ensure maximization of the benefits yielded.

Through the ambit of the definition adopted by the Committee, Artificial Intelligence has been described as a discipline of computer science aimed at developing means through systems and mechanisms that incorporate human intelligence enabling the performance of a range of cognitive tasks.

The Committee relied on a report by Accenture, projecting an economic addition of USD 957 billion by 2035. However, such an impact would depend on the optimal utilization of the potential benefits. The Committee draws a natural correlation between the implementation of intellectual property safeguards for the protection of AI and its conduciveness to economic derivatives.

Main Hurdles

One of the main hurdles to the patenting of AI-based software is the statutory one imposed by Section 3 (k) of the Indian Patent Act, that restricts the patenting of “mathematical or business method or a computer programme per se or algorithm”. To qualify as patentable within the current legal framework, the AI application is required to be in compliance with the Guidelines for Examination of Computer Related Inventions (CRIs) by the Indian Patent Office. Such mandatory compliance requirements substantially diminish the patentability of AI inventions and technologies. The suggestions of the Committee to review such a provision are testament to the need to revamp the patentability criteria in light of contemporary developments.

A paramount observation made by the Committee regarding AI innovations facing obstructions in patenting owing to the standard restriction to human inventors opens an official channel to acknowledging a global issue. AI inventors continue to be the central point of global controversial discourse.

Article 58 of the European Patent Convention (EPC) entitles only a “natural or legal person or any body equivalent to a legal person” to file a patent application, however, an application does not have to be the designated inventor. The European patent office (EPO) interpreted the EPC to hold that the designated inventor has to be a human being, thereby eliminating the classification of machines as inventors. With this rationale, the EPO rejected two patent applications wherein the AI DABUS had been designated the inventor by the applicant while the applicant claimed to be a successor in title and an assignee. It pronounced that an AI did not meet the purported precondition of having a legal personality.

This stance has been adopted down the years by several counterparts such as the United States of America, Japan as well as China. While denying patent protection to a similar application listing DABUS as the inventor, the US interpreted the US Code as well as several precedents to suggest only natural persons as inventors. China’s take on the subject of allowing inventorship to AIs is along the same lines, restricting inventors to natural “persons”. Such an interpretation has been made on the basis of the provisions of Article 13, 17, and 26 of the Patent Law of the P.R. China, as reflected by Justice He Jun of the Intellectual Property Court of the Supreme People’s Court of the People’s Republic of China in the Second Session of the WIPO Conversation on Intellectual Property (IP) and Artificial Intelligence (AI) held in July 2020. A Japanese report dated July 2020 by the Patent Examination Department of the Japan Patent Office (JPO) examining the developments in AI-related Inventions showed a boom in AI core as well as AI applied inventions and projected a substantial growth of such patent applications in the future. However, while the Japan Patent Act does not expressly define an inventor, the status quo in Japan according to judicial pronouncements does not accept an AI as an inventor and restricts inventorship to natural persons.

Recent Milestone – DABUS

However, a milestone was achieved when recently, the Australian Federal Court in Thaler v Commissioner of Patents [2021] FCA 879 diverged from the traditional interpretation of what constitutes an inventor, thereby naming the AI DABUS as the inventor of a patent. This decision would be a significant achievement as a part of the initiative “Artificial Inventor Project” led by Dr. Ryan Abbot, as well as for the inventor of DABUS, Dr. Stephen Thaler. Justice Beach, while rendering this decision, opined that a denial of the patent would inhibit innovation. In his rationale, Justice Beach observed that “non-humans” have not been expressly statutorily excluded from being classified as inventors, and accepting AI as inventors would boost technological innovation, which is one of the cornerstones of patent protection. Two days prior to the Australian pronouncement, South Africa had granted patent protection to a similar application designating DABUS as the inventor. The judgment of the Australian Federal Court nonetheless would be the first judicial body to provide a reasoned decision favouring an AI inventor. Such a fundamental shift in approach would invariably be felt in encouraging deliberations and discourse in the current predominant global policy across nations of rejecting AI as inventors. The potential of a consequential systemic overhaul is not unlikely. The Indian Parliament Standing Committee’s observations, if taken as a representation of the administrative sentiment, would essentially indicate aligned interests with such a progressive stance.

What lies ahead:

However, considering the present position of India in the global context, in order to level the playing field, the intellectual protection of AI patents would be the initial challenge to be addressed before undertaking ground-breaking policies designating them as inventors. The hurdles associated with the protection of AI are enhanced due to its nature which is wide-ranging, extensively diverse, giving rise to several collateral legal implications. As suggested by the Committee, overcoming statutory limitations would be an essential step in achieving protection of AIs and AI-related inventions. Further, a significant challenge that would stand in the process of AI patenting would be its categorization. As per WIPO Publication 1005 of 2019, in light of the International Patent Classification (IPC), The Cooperative Patent Classification (CPC), as well as the FI and F-term list used by Japan, identified numerous hundred classification codes that could be associated with AI technologies. The report then goes on to broadly divide the categories into three folds on the basis of the Association for Computing Machinery (ACM) Computing Classification Scheme, namely, AI techniques, AI functional applications, and AI application fields. In order to ensure that these technical impediments are efficiently maneuvered, a structured and systematic approach is imperative. The creation of a separate department exclusively for the purpose of AI-related inventions and solutions, as suggested by the Committee, could be a promising step in the actualization of such initiatives. The challenges to constitution, empanelment, authority, and implementation that persist would require immediate action, to ensure global recognition and acceptance for India.

This Article has been authored by Ms. Srijita Goswami

Spread the word

Leave a Comment

Your email address will not be published. Required fields are marked *