Countries in WIPO will say ‘yes’ to the alignment of US patent laws with member nations

Thus with the age of globalization, proposals to further harmonize domestic patent laws at the international level have understandably attracted considerable attention. International patent harmonization originally meant the creation of uniform patent laws throughout the world. Even though patents have always been national, such a system was efficiently-sized at a time when economies were relatively closed and technology diffused slowly. Today, inventors can expect many of their inventions to be immediately usable throughout the world. As the number of countries for which an inventor seeks a patent increases, the costs of national filings and determinations rises proportionately. So also the inadequate patent protection in external markets leads to a loss in economic rent to the inventor especially in a global economy that has an unharmonized patent protection - the incentives to inventors may definitely be diminished. This could be demoralizing knowing that one's invention is inadequately protected from being copied.

The majority of the international patent community is and has been supportive of the idea of uniformity, recognizing the value of creating a uniform patent law on a global scale with all of its attendant benefits to be accrued. This has led to the European Parliament adopting a uniform patent system for Europe. If the plan goes into effect as expected by early 2014, it would try to remedy the country-by-country approach whose time and costs have long been an impediment to innovation across the European Union.

This procedure can thus be argued for the continent of Africa to have a uniform regime for the regulation of African patent system, just as the European Union has done. Participating countries in the World Intellectual Property Organization (WIPO) and the World Trade Organization (WTO) have a number of treaties and agreements in place that articulate the concept of international harmonization of patent laws - the Paris Convention for the Protection of Industrial Property (Paris Convention), the Patent Cooperation Treaty (PCT), the Patent Law Treaty (PLT), the Trade-Related Aspects of Intellectual Property Rights (TRIPS), and WIPO Treaties. All these treaties can definitely help in reshaping patent regulations on the continent of Africa and in the same process pursue a uniform patent regime.

issue 11: further rights in relation to data;

issue 12: designs: authorship and ownership;

issue 13: trade marks;

issue 14: trade secrets;

issue 15: capacity building; and

issue 16: accountability for decisions in IP administration.

The second set of WIPO conversations took place remotely from 7 to 9 July 2020 () and focused on the issues published in the May 2020 paper. The overarching theme was that existing IP laws are flexible enough to be applied to AI technology, but clearer guidance is required to ensure that there is an internationally consistent approach. Further, many cautioned against implementing legislative changes quickly, when AI technology is still developing rapidly. There was also a suggestion that WIPO should consider certain priority areas which require a more immediate response and others where further research should be undertaken prior to any action being undertaken.

The international discussions centred around the following five points:

Patent inventorship and ownership: It was unanimously agreed that a patent should be owned by a natural or legal person (and an AI machine should not be able to own an invention), but the issue of whether an AI system should be named as the inventor of a patent was widely debated. Ryan Abbott (Professor of Law and Health at the University of Surrey and part of the team that filed test cases naming DABUS AI as a patent inventor1) argued that we have already reached a stage where AI systems are generating patents without human intervention and if we do not recognise these AI inventors, humans may be attributed credit for inventions that they did not actually devise. Further companies should be encouraged to invent efficiently. Some of the patent offices suggested that where AI was being used as a tool to create a patentable invention (for example in the case of narrow or weak AI), it was appropriate for a human inventor to be named. However, further harmonised guidance was necessary in the case of strong AI which was capable of creating inventions without human intervention. From a policy perspective, WIPO needed to consider whether the patent system was designed to incentivise the creativity of humans only or protect all technological advancements.

Inventive step: A distinction was drawn between AI-Assisted and AI-Generated inventions and there was a call for clear definitions to be adopted. AI-assisted inventions were generally thought to be those inventions developed with material human intervention and/or direction with the assistance of, for example machine or deep learning, whereas AI-generated inventions are those that are the output of AI without human intervention (and where AI is changing its behaviour during operation to respond to unanticipated information or events). In the case of AI-assisted inventions, where AI is used as a tool in the hands of the person skilled in the art, it would be important to consider whether the AI technology was available to the skilled person at the relevant date for assessing inventive step. In the case of AI-generated inventions, could an AI system become the equivalent of the person skilled in the art? Judge Klaus Grabinski (an eminent German patent law judge) commented that this would be more challenging, as it would be difficult to judge the inventiveness of an AI system.

Disclosure: Another issue identified as requiring clarification was the level of disclosure that is required to be included within patent applications. For AI-assisted inventions, it was argued that no disclosure of the AI algorithms or training data should be required, so long as there was sufficient and complete disclosure of the invention in the patent application. However, there was a debate over black box AI related inventions with the judges suggesting that patents should not be granted in those cases (as it would be difficult to explain how the AI system works, how it responds to multiple factors to solve a technical problem and so that the skilled person can reproduce the invention). However, representatives from industry suggested that there would always be “an iota of black box in an algorithm” and this was an unduly narrow restriction. It was suggested that a global depositary similar to that which has been used for the deposit of microorganisms under the Budapest Treaty may be useful for algorithms and related training data, although it would need to be internationally accepted if it was to have any credibility.

Access to training data: There was a broad range of support for greater access to high-quality and varied data or inputs for a variety of different reasons, such as improving AI outputs, preventing bias within AI systems, increasing access to documents to train library search systems and also leveling the playing field to prevent companies with huge piles of data from developing AI capabilities that will vastly outcompete those without access to such data. Research was presented by Sean Flynn (Chair of the Global Expert Network on Copyright User Rights) from a project examining copyright laws around the world to see whether they allowed data mining to a sufficient enough extent to enable AI machines to be trained. His team’s work showed that vast parts of the world, including the majority of South America, currently have laws in place that make this type of research and development illegal. WIPO identified this as an area for further research attention, potentially distinguishing between the situation where the data mining occurs to further research and scientific understanding generally, and where the data mining produces new works (eg music, art or literature) that compete with the original works that are mined.

Copyright and creativity: There were a number of submissions that human creativity is at the centre of copyright law. It was also emphasised that copyright is the economic foundation of creative sectors such as the music industry and that any weakening of copyright laws would be hugely detrimental to artists and authors. As such, we should not be quick to grant copyright protection to works created by machines. Whether there should be new rights granted to authors whose works are used to train AI machines was also discussed (and whether use of such works without permission would amount to an infringement of copyright in any event) and it was highlighted that current rules on joint ownership of copyright are not sufficient to deal with the complexities of AI systems.

Next steps

All parties are invited to submit any further interventions and comments by email by 24 July 2020. WIPO then intends to publish a document outlining the preliminary considerations from the many questions raised in the recent sessions and potentially a list of priority areas on which WIPO intends to focus. This will set the agenda for the development of clearer guidelines on how legislation should be applied to deal with AI in the intellectual property sphere. WIPO also intends to facilitate further discussions by holding a third session of the Conversation on IP and AI in November 2020.