Patentability and PHOSITA in the AI Era—A Japanese Perspective

Although it may not be clear whether AI may generate the invention autonomously without human intervention, recent development of AI produces inventions of AI technologies such as machine learning (deep learning). Inventors also have begun to use AI as a tool to help them create inventions. These AI-assisted inventions raise the urgent and practical issues of patentability such as patentable subject matter (patent eligibility), disclosure requirements, and inventive step (non-obviousness). The Japanese Patent Office (JPO) updated the Examination Handbook to address some of the issues. For instance, they discussed to what extent inventors should disclose in patent applications because AI as a black box does not explain how the problems are solved. However, the JPO did not pay much attention to the possibilities that not only inventors but also a person having ordinary skills in the art (PHOSITA) might use AI and PHOSITA with the aid of AI could create the inventions more easily, thereby raising the level of inventive step. This chapter critically reviews the JPO’s updated Handbook and discusses whether and how we can take into account the use of AI by PHOSITA in examining inventive step.

6. Patentable Subject Matter

This chapter considers the subject matter for which European patents may validly be granted under the European Patent Convention (EPC), and the substantive European (EPC and EU) legal principles governing their identification and conception. To this end it discusses the two-fold role of the requirement for an invention in European patent law: first, as a means of filtering protectable from non-protectable subject matter; and second, as a means of denoting the object of patent protection, i.e. that which must be new, inventive, susceptible of industrial application, and clearly and sufficiently defined and described in the patent specification, and that with reference to which the scope of the patent monopoly is defined under Article 69 EPC. It also discusses the range of public policy-based exclusions from European patentability, and their relation to the requirement for an invention itself.

EXPLANATION OF PATENTS

A patent is a form of intellectual property. A patent gives its owner the right to exclude others from making, using, selling, and importing an invention for a limited period of time, usually twenty years. The patent rights are granted in exchange for an enabling public disclosure of the invention. People who are employed to do research are often obligated by their employment contracts to assign inventions to their employer. In most countries patent rights fall under civil law and the patent holder needs to sue someone infringing the patent in order to enforce their rights. In some industries patents are an essential form of competitive advantage; in others they are irrelevant. The procedure for granting patents, requirements placed on the patentee, and the extent of the exclusive rights vary widely between countries according to national laws and international agreements. Typically, however, a granted patent application must include one or more claims that define the invention. A patent may include many claims, each of which defines a specific property right. These claims must meet relevant patentability requirements, such as novelty, usefulness, and non-obviousness. Under the World Trade Organization's (WTO) TRIPS Agreement, patents should be available in WTO member states for any invention, in all fields of technology, provided they are new, involve an inventive step, and are capable of industrial application.[4]Nevertheless, there are variations on what is patentable subject matter from country to country, also among WTO member states. TRIPS also provides that the term of protection available should be a minimum of twenty years. Keyword : Patents.

17. Patentable subject matter

This chapter deals with patentable subject matter and the ways in which it is regulated under the Patents Act 1977 and the 2000 European Patents Convention (EPC). More specifically, it discusses five criteria that an invention must satisfy to be patentable, including the requirement that it must be capable of ‘industrial application’, and that patents are not granted for immoral inventions. The chapter also considers two different approaches that are used when deciding whether an invention falls within the scope of section 1(2)/Article 52(2): the ‘technical effect’ approach in the UK and the ‘any hardware’ approach applied by the European Patent Office. Finally, it examines how the law deals with a number of specific types of invention and looks at possible reforms, particularly in relation to computer programs and computer-related inventions.

Patenting Bioinformatic Inventions: Global Perspective

Patenting bioinformatic inventions has become a ride on the rail to the scientists and inventors. Specifically in bioinformatics, drafting an invention in bounds of patentability criteria is one the most critical task for an inventor to protect his invention. As bioinformatics is a budding field of science, patentable subject matter in bioinformatics was not specifically defined by most of the patent offices in the world. In this regard, we have tried to explain patentable subject matter in bioinformatics by classifying bioinformatics into different subject fields. Additionally, we have tried to trace out patentable subject matter for bioinformatic inventions based on country-specific patentability standards and granted bioinformatic patents of US, Europe, India, Canada and Australia.

Patenting Therapeutic Methods: Statutes and Strategies

Patenting medical therapeutic methods has become one of the toughest tasks for inventors and scientists in some jurisdictions where these methods are excluded from patentable subject matter. There are recent amendments by different countries in relation to patentability aspects of Therapeutic methods. In this scenario, analysis of these recent amendments would provide a path for researchers in the field to identify whether their inventions are considered as patentable subject matter. Our analysis sheds some light on different statutes and regulations of major jurisdictions on the patentable subject matter and patentability aspects of therapeutic methods. Furthermore, we have identified that most of the jurisdictions restrict inventors in patenting therapeutic methods. However, some countries such as United States and Australia allow patents related to therapeutic methods. We think adapting different strategies that are provided in this article would help researchers, inventors and patent attorneys in patenting the inventions related to therapeutic methods. Moreover, while applying the provided strategies, it is suggested that inventors should draft the patent claims by keeping a note of different statutes and regulations of countries in which they are interested to file the patent applications.