Paper Details
Paper Code: RP11V12023
Category: Research Papers
Date of Publication: December 06, 2023
Citation: Ms. Anushka Rao, “Patentability of AI Inventions in India: Promising Features and Preliminary Concerns”, 1, AIJIPCA, (2023).
Author Details: Ms. Anushka Rao, Student, Vivekananda Institute of Professional Studies, GGSIPU, New Delhi
ABSTRACT
At the forefront of COVID-19, when the world came to a halt; Artificial Intelligence (AI) contributed to the digital defines against the pandemic. It led to the development of new medications, vaccines, and diagnostic procedures. Even in our daily tasks, AI has paved the way for more creative and revolutionary approaches. The emergence of AI Inventions has sparked a whole new controversy regarding the ownership, patentability, protection, and enforcement of intellectual property rights in the realm of AI inventions. In India, the concept of ‘technical effect’ in the outcome generated or created is given priority. Even though Artificial Intelligence has become the ‘hot topic’ for debates in technology law, the law is struggling to keep up with such advancements. The current legal framework in India needs to evolve to address the role of AI in creating patentable inventions. The article intends to examine the basic tenets of patent law in this area. This article attempts to study the concept of AI and the legal implications of patenting it. Lastly, the article provides a critical analysis with suggestions asserting that AI inventions can have a significant impact on a nation’s innovation potential and economic growth, The need of the hour is to bridge the gap between the legislative framework and technological advancements.
KEYWORDS
AI-Generated Inventions; Patentability; Technical Effect; Technical Contribution; Legal Personality
Introduction
Artificial intelligence, also known as machine intelligence, refers to automated intelligent approaches. Simulating logic, information, learning, perception, planning, communication, and operation are at the heart of an AI.[1] It is a machine-based simulation of human intelligence. Today, AI is capable of creating inventions without any assistance from humans. Patenting ‘non-obvious and efficient technology’ provides exclusive benefits for the growth of the economy as well, such as an incentive to invest in the Research and Development (R&D) of new technology.[2]
Key stakeholders including universities, businesses, and public research institutions have turned to intellectual property laws to help secure their breakthrough inventions.[3]
The advancements can be protected in two ways:
By a patent, and
Through scientific publication.
India ranks higher in scientific publications than in patent filings, according to the WIPO report on AI technology trends.[4]
Patentability of an AI
Obtaining a patent for an AI invention presents complexities at the forefront of Intellectual Property Laws. Some jurisdictions have permitted the AI machine to be included as an inventor on patents even though most IP laws currently do not have particular provisions to accommodate a non-human entity as an inventor for patents. South Africa in Thaler v. Vidal[5] permitted such a patent. The applicant in this case had waged a campaign around the world by filing patent applications for his “Device for the Autonomous Bootstrapping of Unified Sentience” (DABUS) in several countries; recently, the US Supreme Court, on the other hand, rejected the application.[6]
The main concerns that AI Inventions raise are:
Whether AI technology can ever be considered an “inventor” in legal terms?
Should AI be viewed as a technical tool or as a person?
Whether the invention created entirely or partially by AI?
Who should be the owner of a patent for AI inventions?
Who should be responsible for the enforcement of patents?[7]
An intriguing question that came across in the context of AI inventions was whether the benefits offered to a human inventor would encourage and applies to inventions created partially or entirely by an AI system.
There is uncertainty over the inclusion of computer-generated inventions within the Indian legal framework for the patentability of AI inventions. The protection of intellectual property of AI inventions has put to the test long-standing practices and principles followed across the world.[8]
Historical Background
The term “Artificial Intelligence” was first used not long after mathematician-cryptologist Alan Turing developed the Turing Test, which is still used today, to gauge the intelligence of machines. This was roughly seven decades ago. The pioneers’ efforts are already bearing fruit, as AI has the potential to revolutionize solutions used in every sector, from transportation to healthcare, and change the way we interact with the outside world.[9] The Intellectual Property Laws are the first to reflect the difficulties that AI technology will have with how human civilization is organized, and its origins may be found in the early days of computer science. The first work deemed to have been independently produced by a computer was submitted to the American Register of Copyrights in 1965.[10]
The Status Quo
We must first determine what is considered "patentable" before talking about the statutes and case laws. An innovation generally cannot be patented unless it meets the following requirements:
An invention is made by one or more inventors.
The invention should not already exist.
There is an inventive step in the invention that is non-obvious. The invention should not be obvious to a ‘person skilled in the art’ who has ‘common general knowledge in that field.
The invention is capable of industrial application or utility.[11]
AI and International Cooperation
The top five IP offices in the world—referred to as the "IP5"—receive more than 80% of all patent applications filed worldwide. These are what they are:
Ø The European Patent Office,
Ø The Japan Patent Office,
Ø The Korean Intellectual Property Office,
Ø The National Intellectual Property Administration in China, and
Ø The United States Patent and Trademark Office.[12]
They collaborate on a number of projects to improve and harmonize the global patent system. Since 2018, they have been looking towards a joint approach to address global technological improvements. By creating a unique task force to oversee their projects, the IP5 offices decided to advance their cooperation in the fields of new emerging technologies (NET) and artificial intelligence (AI) in 2019.[13] The Indian Patent Office received a considerable increase in artificial intelligence-related patent applications between 2016 and 2020, According to a recent search by Banana IP’s patent attorneys utilizing WIPO keywords. According to the WIPO report on AI technology, Indian research in computer vision, natural language processing, distributed AI, planning/control, speech processing, and predictive analytics is quite considerable, however, it is not reflected in PCT applications. Research shows that between 2012 and 2015, the number of AI patent applications with an initial Indian file increased by 33%. India ranks at No. 5 in distributed AI applications and has high-ranking publications in the fields of fuzzy logic and machine learning.[14]
The Indian Perspective
We know that the Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement is the Bible for international compliance with IP laws. All World Trade Organization (WTO) members must comply with its principles. To become TRIPS compliant, India introduced Section 3(k) in the Patents (Second Amendment) Bill, 1999. Section 3 of the Indian Patent Act, 1970 provides for “What are not inventions”. Clause (k) categorizes “mathematical or business methods, computer programs ‘per se’, and algorithms” as non-patentable. The term ‘per se’ has not been defined in the Indian Patent Act. The legislative intent behind ‘per se’ as expressed by the Joint Parliamentary Committee while introducing the 2002 Amendment was that “In the new proposed clause (k) to Section 3, the words ‘per se’ have been included. This change has been suggested because sometimes the computer program may include certain other things, ancillary thereto or developed therein. If they are inventions, the purpose is not to deny them the right to a patent. However, it is not intended to give patents for the computer programs themselves. This amendment has been proposed to clarify the purpose.”[15]
However, this provision does not outright forbid the patenting of Computer-Related Inventions (CRI). According to Indian Patent Law, only inventions that explicitly disclose computer programs per se are not considered to be inventions.[16]
In 2019, the Delhi High Court, in Ferid Allani v. Union of India and Ors,[17] acknowledged that computer-based innovations like AI, blockchain, and related technologies were the future of innovation, but added that these innovations “would not become non-patentable inventions - simply for that reason.” The court held that “technical effect” or “technical contribution” must be assessed to determine if the CRIs are patentable and that the mere use of a computer program to execute an invention does not preclude its patentability. It was only recently that the Delhi High Court, in Opentv INC v. Controller of Patents and Designs and Anr,[18] recommended that the government should, on a priority basis, review the existing legislation of The Patents Act, 1970 and Copyright Act, 1957 to incorporate the emerging technologies of AI and AI related inventions in their ambit. Although, the court categorically denied the patentability of the invention as it fell within the ambit of Section 3(k).
Other related sections of the Indian Patent Act, of 1970 are as follows
Section 6(1)(a): “An application for a patent for an invention can be made by any ‘Person’ claiming to be the first and true inventor of the invention.”
Section 2(1)(y): “True and first inventor” does not include either the first importer of an invention into India or a person to whom an invention is first communicated from outside India.
Section 2(1)(s): ‘In this Act, unless the context otherwise requires, — “person” includes the Government.’
The ‘Person’ does not automatically become the first and true inventor of the invention. It is important to note that the ‘Person’ must assert that they are the ‘first and true inventor' of the invention. Although Section 2(1)(y) mentions who cannot be an inventor, an ambiguity arises concerning who can be referred to as the ‘first and true inventor’ in the case of an AI invention.[19] The case of V.B. Mohammed Ibrahim v. Alfred Schafranek[20] establishes the precedent for inventorship. The court held that neither a corporation nor a financing partner could be the sole applicant claiming to be the inventor. This decision emphasizes the fact that an inventorship is typically claimed by a natural person, who is neither a financing partner nor a corporation and who genuinely contributes their skill or technical knowledge towards the conception of the invention.
The AI invention may also be regarded as a ‘natural person’ according to the criterion set by the above-mentioned case. Regarding the legal person and non-legal entity, the Supreme Court of India in Som Prakash Rekhi v. Union Of India & Anr[21] determined who constitutes a legal person and who doesn’t. The court decided that a jurisdictional person is the one to whom the law gives ‘personality’. A legal entity that can sue or who can be sued by another entity is referred to as having a juristic personality. An AI is fundamentally incapable of exercising any of the rights vested in a legal person or carrying out the necessary responsibilities of any autonomous legal entity.
Therefore, after analyzing the provisions and case laws, one can assess that an AI cannot be recognized as an inventor in India. However, AI-related inventions are currently being acknowledged in India based on the fact that AI is being used as a tool to facilitate the inventor.[22]
The patentability of AI inventions in India is not entirely prohibited. In response to the Delhi High Court’s 2019 decision in Ferid Allani, the Indian Patent Office (IPO) has begun reviewing AI-related inventions based on the “technical effect” created by such inventions, even though it has not yet provided clear instructions on the matter. The technical impact or technical contribution of the invention, as well as the definition of broad terms in connection to specific technical effects, must be stated in the patent applications for AI inventions, and it is preferable to distinguish the invention from the cited prior art. However, the Indian domain is still expanding, and the practice and procedure of the IPO may evolve over the years.[23]
Opinions and Suggestions
The advancement in the AI sector has been fueled and made possible by the phenomenal growth of data on a global scale, which has also sparked a flood of AI-related patenting. The issue with the AI Inventions patent is not about ‘who’ created the invention, but rather about ‘what’ was invented. When it comes to these inventions, the first and most important question that patent registration offices have to address is whether the inventor must be a human. Another issue pertaining is that AIs might soon be so efficient that their inventions could swamp the patent system with applications.[24]
Another challenge is even more fundamental. When an invention is regarded as “non-obvious” by a “person knowledgeable in the art,” it is said that the inventor has taken an “inventive step.” The general knowledge and skill set of this hypothetical person are those of an ordinary expert in the relevant technical field. The innovation moves one step closer to being granted a patent if a patent examiner determines that the invention would not have been obvious to this hypothetical individual. We have specific regulations that safeguard a person's concrete ideas as intellectual property when it comes to intelligence. The term “inventor” is not yet defined in the Indian Patents Act. As a result, it is necessary to appreciate the Indian Patent Act as a whole, to comprehend the legislator's intent and interpret the term ‘inventor’.[25]
The foremost debate across countries regarding AI inventions is whether patent protection should be restricted to inventions with a human contribution or whether it should be available for inventions that represent new, non-obvious technical developments with \the aid of an AI system.
With respect to the interpretation of the term ‘per se’ in Section 3(k); it was observed in the Mohd Ibrahim case[26] that “the restriction on patenting only applies to ‘computer programs per se’ and not to all inventions based on computer programs. It would be outmoded to claim that all inventions in the digital age, where most inventions are based on computer programs, would not be patentable. Innovation in the field of Artificial Intelligence, Blockchain Technology, and other digital products are based on computer programs, however, the same would not cease to be patent-able inventions simply for that reason. A product that is not dependent on a computer program is uncommon. All of them have some kind of built-in computer program, including cars and other vehicles, microwaves, washing machines, and refrigerators. Thus, to determine patentability, the effect that such programs produce, including in digital and electronic products must be evaluated.”
Indian enterprises and inventors are ideally positioned to benefit from the AI revolution through the acquisition of patents and related exclusivity, given the country's capabilities in the software industry. But to make this happen, some crucial facets must be properly constructed. To make India successful in AI innovation, the country should be greatly aided by a clear and well-defined patent policy, legislative amendments to tackle inventorship and patentability issues, clear patent examination guidelines, uniformity in patent review, and proper data set and database protection. Additionally, the strategic application of open source, open data, and open innovation models will foster creative competition.[27]
Conclusion
AI is a paradigm-shifting challenge that forces us to reconsider how to acknowledge and foster invention. It is necessary to make legislative reforms to guarantee the patentability of AI inventions and possibly solve the AI inventorship issue. It would be interesting to see how the law will adapt to the emerging issues of AI inventions which are constantly evolving. The prime objectives of granting patents are to promote R&D, boost economic growth, and intrigue human minds to attempt innovation. The field of AI technology is expanding at a rapid pace. The patent law with respect to AI must be adaptive and must seek to achieve and promote social and economic welfare. Negative social and ethical ramifications must be kept to a minimum or must be entirely avoided by taking the appropriate precautions. The patent application and examination procedures in India must evolve in accordance with the continuous advancements in technology.[28]
AI inventions can have a significant impact on a nation’s innovation potential and economic growth. If no action is taken, AI might widen the digital divide globally which will only hamper the growth of a country in totality.
[1] Xiao-QingFeng, Bai-HuaPan, ‘The evolution of patent system: invention created by artificial intelligence’ (2021) 183 Procedia Comput. Sci. available at: <https://www.sciencedirect.com/science/article/pii/S1877050921005226ref=pdf_download&fr=RR&rr=731f4a918891a926> accessed 14 August 2023.
[2] Shlomit Yanisky-Ravid, Regina Jin, ‘Summoning a New Artificial Intelligence Patent Model: In The Age Of Pandemic’ (2021) 1 SSRN available at: <https://www.ncbi.nlm.nih.gov/pmc/articles/PMC7366817/> accessed 16 August 2023.
[3] Canadian Intellectual Property Office, ‘Processing Artificial Intelligence: International Importance of IP and AI’ (Government of Canada, 2 October 2020) available at: <https://www.ic.gc.ca/eic/site/cipointernet-interneto pic.nsf/eng/wr04779.html> accessed 16 August 2023.
[4] Dr. Kalyan C. Kankanala, ‘Artificial Intelligence (AI) Inventions and Patents in India’ (K-Tech Centre of Excellence Data Science and Artificial Intelligence, 27 July 2021) available at: <https://coe-dsai.nasscom.in/artificial-intelligence-ai-inventions-and-patents-in-india/> accessed 16 August 2023 .
[5] U.S. Court of Appeals for the Federal Circuit, No. 21-2347.
[6] Benzinga, ‘Who Owns AI’s Inventions? US Supreme Court Says It’s Not The AI’ (Yahoo! Finance, 12 May 2023) available at: <https://finance.yahoo.com/news/owns-ais-inventions-us-supreme-53958496.html?gucco uer=1&guce_referrer=aHR0cHM6Ly93d3cuZ29vZ2xlLmNvbS8&guce_referrer_sig=AQAAAL-O0bSLO8t8ycROT QNEeBG78NaVPFm-VAbsGWZIwdM4iN0 3rcCu9LERZh T6gqR5CYGDRiZIybKPeHlAhwStUwHgJSqTgX9utVwzu-3_Olj1G_TmOLN1pPpYNIGNOdz_GDELbQAwMq6oVtodp5I4I2JuG3PKEib3soApeT4RVW0> accessed 16 August 2023.
[7] Brooks, ‘Should AI Systems be Eligible for Patents?’ (Brooks, 28 January 2022) available at: <https://w ww.brookskushman.com/insights/should-ai-systems-be-eligible-for-patents/> accessed 17 August 2023.
[8] Muskan Saxena, ‘Patenting AI and its Legal Implications’ (IPR Law India, 1 February 2021) available at: <https://iprlawindia.org/wp-content/uploads/2021/04/Muskan-Saxena.pdf.> accessed 17 August 2023
[9] Neha Arora, Dr. Joyita Deb, ‘A future-proof Indian Patent Office? Patenting AI inventions in India’ (Bar and Bench, 23 February 2022) available at: <https://www.barandbench.com/view-point/a-future-proof-ipo-patenting-ai-inventions-in-india> accessed 17 August 2023.
[10] QingFeng (n 1).
[11]Alexandra George, Toby Walsh, ‘Artificial intelligence is breaking patent law’ (Nature, 24 May 2022) available at: <https://www.nature.com/articles/d41586-022-01391-x> accessed 18 August 2023.
[12] European Patent Office, ‘Artificial Intelligence’ (European Patent Office, 2 May 2022) available at: <https://www.epo.org/news-events/in-focus/ict/artificial-intelligence.html#:~:text=AI%20and%20patent ability,implemented%20inventions%22%20(CII)> accessed 18 August 2023.
[13] Ibid
[14]Kankanala (n 4).
[15] Harsha Aswani, ‘Inventorship and non-obviousness standard in artificial intelligence’ (Ipleaders, 30 December 2021) available at: <https://blog.ipleaders.in/iventorship-and-non-obviousness-standard-in-artificial-intelligence/> accessed 18 August 2023.
[16]Ibid.
[17]W.P.(C) 7/2014 & CM APPL. 40736/2019.
[18] 2023 SCC OnLine Del 2771.
[19] Archana Raghavendra, ‘Does AI Qualify As An ‘Inventor' Based The Statute In Indian Patents Act 1970?’ (Mondaq, 5 January 2022) available at: <https://www.mondaq.com/india/patent/1147320/does-ai-qualify-as-an-inventor39-based-the-statute-in-indian-patents-act-1970> accessed 18 August 2023.
[20]AIR 1960 Mysore 173.
[21]1980 AIR 1981 SC 212.
[22] Raghavendra (n 19).
[23] Arora (n 9).
[24] George (n 11).
[25]Ibid.
[26]AIR 1960 Mysore 173 (n 20).
[27] cf Kankanala (n 4).
[28] Saxena (n 8).