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An Indian Perspective: Patentability Requirements for AI related inventions



The word ‘Artificial’ literally means “made or produced by human beings rather than occurring naturally, especially as a copy of something natural” or signifies “not existing naturally; contrived or false”. While the word ‘Intelligence’ means “the ability to acquire knowledge and skills” and if construed harmoniously, the term “Artificial Intelligence” or “AI”, denotes to those classes of systems or machines, which accomplish tasks by collecting and mimicking human intelligence and may iteratively improve itself based upon the data so collected.


Hence, an invention is deemed to involve AI, if the invention was made partially or fully by AI, and/or the invention consists of (new or improved) AI. AI related Inventions are not limited to computer-implemented inventions, but comprise e.g., also the discovery of a new drug by means of AI.


In this respect, one of the questions arises while determining the requirements of patentability of such AI related inventions i.e., assessment of “Inventive Step”.


Current law, defines “Inventive step“ under Section 2(1)(ja) of the Indian Patents Act, 1970 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.”


However, for an “AI” related invention, not only the scope and content of prior art is expanded going beyond analogous arts but also the detrmination of “techincal contribution “. Due to the wider use of AI, the prior art base has increased exponentially, making “AI“ capable of knowing and processing virtually everything.


Therefore, the test of “Inventive Step” needs reconsideration and should be an objective process involving the following: (i) true/actual circumstances under which an invention was made (e.g., the amount of time and resources used by the true inventor), and (ii) whether an invention is made by a human being using AI technology or inventions made autonomously by AI.


The another related question is about requirements of “Sufficiency of disclosure” for “AI related inventions” which ensures that the person skilled in the art is enabled to carry out the claimed invention based on the disclosure of the patent specification under Section 10(4) of the Indian Patents Act. Since the inner workings of an AI are often undisclosed or at least very difficult to comprehend, such enablement might be unclear in case of “AI related Inventions” which may, in turn, make the assessment of the “Inventive step” more complex.


For example, the “specific profile” of a blade of a turbine or the “specific composition” of a drug was designed using AI. The current standards, only, requires to sufficiently disclose “specific profile” of a blade or the “specific composition” of a drug, without disclosing the inner workings and/or raw date of the used AI in order to meet the sufficiency of disclosure requirements. Even, if the invention consists of a new or improved AI, the inventive element of this AI has to be assessed by determining the “technical advance” w.r.t to the existing AI platform or environment (which may involve extensive databases) in which the invention is operating. Therefore, a possible amendment of the definition of the “person skilled in the art” in the statute is recommended which may help to assess the requirements of ‘super-capable’ AI skilled person to carry out the invention.


Having said that, AI and its applications are significant in India’s revenue generation and economy, and are increasingly used in the inventive process. Therefore, patentability of “AI related inventions” is crucial to fostering future growths. 161st Parliamentary Committee Report recommends creating a separate category of rights for AI related inventions. However, this may burden the existing systems with additional administrative needs which may turn out to be complex and time consuming.


Therefore, the recommendation is to without disturbing the existing system further adjust the legal provisions and examination guidelines by linking the assessment of “Inventive Step” and “Sufficiency of disclosure” for patentability of AI related inventions.

 

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