Midwinter begins, and everything is renewed. With the care and support of many experts in the field of artificial intelligence intellectual property, IPRs, and lawyers, the 3rd Intellectual Property Frontier Artificial Intelligence Forum (IFAF 2023) was successfully concluded on December 8, 2023 at Four Points by Sheraton Beijing Haidian Yongtai Hotel.
The event was co-hosted by YIP Events & IP Frontier New Media & Compliance Plus, with the theme of "Intellectual Property Protection and Innovation Value in the Intelligent Era" during the two-day conference and half-day pre-conference seminar.
At the forum on December 7, Lei Hanfang, Head of Intellectual Property at TuSimple Future, delivered a keynote speech on "Comparison and Analysis of AI Patent Application Strategies and Examination Rules in China, the United States and Europe". IP Frontier has compiled the content of Mr. Lei's on-site keynote speech into a text for reference and Xi by intellectual property professionals.
table of contents
1. Introduction to patent work
II. Examination Standards for the Subject Matter of Patent Protection
3. Review standards for full disclosure
IV. Examination Criteria for Inventive Step
5. Application Strategy
1. Introduction to patent work
Patent work in an enterprise generally includes the following aspects:
1. Master key technical solutions;
2. Adequate understanding of technology;
3. Dig up valuable patent applications.
The above three items are the basic requirements for IPR, and it is necessary to learn from each other Xi communicate with R&D personnel and learn more about the projects in which R&D personnel participate. When the R&D personnel apply for a patent proposal, they need to do a detailed search and analysis of the proposal, and when communicating with the R&D personnel about the application plan, it is necessary to convert the analysis results into expressions that are easy for the R&D personnel to understand, and provide application suggestions for the comprehensive evaluation of IPR, so that the R&D personnel can clearly know the key points of the protection scope of the application scheme and how to carry out the key technical features. After the above full communication, IPR can better assist R&D personnel in how to use patents to protect technical achievements?
4. Evaluation;
5. Application;
6. Analysis;
7. Regularly share the theme Xi, and the team grows together.
The work described in items 4 to 7 can help IPR to better understand the technical solution of the patent application. In the evaluation process, it is also necessary to consider the company's operational layout and the business value of the solution.
If the IPR has a high degree of technical knowledge, it can better guide the inventor and communicate with external agents in the process of participating in the new patent application process to obtain better patent protection coverage. In addition, it is possible to better integrate the content of the revision of office actions at home and abroad.
II. Examination Standards for the Subject Matter of Patent Protection
For autonomous driving solutions, many core technologies rely on computer algorithms, machine Xi, and models. In the past, the subject matter of protection was a difficult issue to overcome, but in recent years it has become clear that it has become easier to overcome.
1. China's Examination Standards for the Subject Matter of Patent Protection
The examination criteria for the subject matter of patent protection in China are set out in the "subject matter for which a patent is not granted" in Article 25.1 of the Patent Law, and further explanations and examples are provided in Section 4 of Chapter 1 of Part II of the Patent Examination Guidelines. However, the Draft Examination Guidelines have broadened the scope of the subject matter of patent examination, and the steps mentioned in the Consultation Draft are all implemented with computer equipment, all of which meet the technical requirements.
2. U.S. standards for the examination of the subject matter of patent protection
Algorithmic models generally rely on mathematical formulas and generally fall into the category of "abstract concepts" in the United States. The examination standard for patent protected subject matter in the United States of America is provided for in Section 101 of Title 35 of the United States Code, which adopts the "Imitation Prior Art Exclusion Method". When faced with an "abstract concept" in an exception, it is necessary to determine whether it has a practical application. If the abstract concept is applied to the actual application scenario, it may be possible to determine the judgment steps of the object of protection.
3. European standards for the examination of the subject matter of patent protection
The European standard for the examination of the subject matter of patent protection stipulates in Article 52 of the European Patent Convention (EPC) that "the invention must be a specific technical solution" and that "the invention must have 'technical features' relating to the technical field, must relate to a technical problem, and must have technical features capable of defining in the claims the matter sought for protection". The patentability issue is mainly considered from the two dimensions of "subject matter of invention" and "technical contribution". Most importantly, it is important to assess whether each feature (both technical and non-technical) contributes to the claimed subject matter in the invention. When comparing, the European examiner will be more detailed, which requires a higher level of technical writing from the applicant.
3. Review standards for full disclosure
The challenge of "full disclosure" is often raised by examiners, especially foreign examiners.
1. China's "full disclosure" censorship standard
Article 26, paragraph 3 of the Patent Law stipulates that the specification is required to be clear and complete, subject to the ability of a skilled person in the art to achieve it. In other words, if the disclosure is insufficient, the technical means are vague, and the person skilled in the art cannot implement it, it will be considered "insufficient disclosure" and will not pass the examination.
2. The U.S. standard of "full disclosure" censorship
The U.S. standard of "full disclosure" provides for 35 U.S.C. § 112(a), which states that "the description shall include a written description of the invention, as well as the manner and process of making and using it, in such a way as to be complete, clear, concise, and precise in such a way as to enable any person with general knowledge in the same or related field to make and use the invention, and the description shall set forth the best mode of use of the invention as conceived by the inventor or co-inventor." ”
In the United States, it has been found in recent years that even if other patentability requirements are met, including qualification, novelty, and non-obviousness, failure to include appropriate support in the initial filing may prevent the grant of a patent.
If the disclosure is found to be too general to prove that the inventor has a specific algorithm for achieving the requested result, the pending claims are found to be lacking in written descriptive support. A similar argument can be made for the lack of enablement if the specification does not describe how to achieve the claimed result.
3. Europe's "full disclosure" review standard
The European standard of "full disclosure" is mainly stipulated in Article 83 of the EPC, which can be said to be very demanding. It is easy to say that the contents of the present disclosure are vague and merely indicate that such automated knowledge discovery cannot be achieved by a person skilled in the art. In order to comply with the European Patent Office's stricter assessment of the adequacy of disclosure, the patent application must explain what technical problem the AI-related invention solves and how. This requires a description of the AI architecture and algorithms that enable the AI-related invention to solve the technical problem described, how to do it, how to deal with it, and how to get the final result should all be reflected in the specification, and often the training data needs to be characterized so that the AI-related invention can be reproduced.
The European definition of a person skilled in the art may not be limited to a variety of general skilled persons in daily work. It is also necessary to master some of the detailed techniques, which may be a common technical point for skilled persons, but perhaps it is the European examiner who believes that the steps should be detailed in order to enable those skilled in the art to realize the technical solution involved in the patent application.
IV. Examination Criteria for Inventive Step
1. China's inventive step examination standards
Article 22, paragraph 3 of the Patent Law stipulates that "inventive step refers to the invention having outstanding substantive features and significant progress compared with the prior art, and the utility model having substantive features and progress". "Non-obvious" is stipulated in Chapter 4 of Part II of the Patent Examination Guidelines: "The invention has outstanding substantive features, which means that the invention is not obvious to a person skilled in the art with respect to the prior art".
Therefore, China's creativity/innovation judgment follows a "three-step method":
(1) determine the closest prior art;
(2) determine the distinguishing features of the invention and the technical problems actually solved by the invention;
and (3) determine whether the claimed invention is obvious to those skilled in the art.
It is suggested that after the initial preparation of the specification, it can be "transferred" and "examined" between different IPRs.
2. Inventive step examination standards in the United States
The inventive step examination standard in the United States is stipulated in Section 103 of Title 35 of the United States Code, and the inventive step judgment in the United States relies mostly on past precedents (and emphasises) the need for clear (and indeed obvious) improvements or combinations of prior art.
3. European standards for inventive step examination
The European standard for inventive step examination is set out in Article 56 of the EPC. It should be noted that the European approach to problem-solution approach generally follows a three-step approach, similar to China:
(1) Identification of the proximity of prior art;
(2) construct objective technical problems to be solved;
(3) From 1 and 2, consider whether the invention to be protected is obvious to those skilled in the art.
4. Summary of the review criteria
By understanding the various review criteria mentioned above, we can summarize some enlightenment:
(1) The current problem of the object of protection is easy to overcome, and the patent protection of core technology solutions in the field of AI does not face substantial obstacles at present.
(2) Drafting should not stop at patentability, not only to increase the number of grants, but also to take into account subsequent rights protection.
(3) Licensing prospects and rights protection considerations, patents need a good scope of protection, and the convenience of rights protection should also be seen when drafting.
(4) Contribution to practical application, to ensure that at least each technical feature is fully described.
(5) For the identification of a person skilled in the art, this is not the same as the inventor, and it is better to make a lenient determination.
5. Application Strategy
1. Choice of application strategy
After deciding to make an overseas layout, the application strategy should consider whether to apply through the PCT route or the Paris Convention route, and it is necessary to first clarify the target market, clarify the target competing products, and consider cost control. If the market is clear and the product is mature, you can go directly to the target country. In the early stages of a business, when the market and partners are not mature or uncertain, the PCT may be a better option.
2. Priority country selection of application strategy
Market orientation is the first consideration, where is the business market. Each country will have local preferential policies, which may be fee concessions, or accelerated processes, fast authorization times, etc.
3. Provisional application for the application strategy
Both the U.S. and Australia have provisional filing systems, which can quickly seize the advantage of the earlier filing date. When the plan is important, but the details of the plan are not certain and perfect, and it is impossible to make a trade-off in a short time, the interim case is a good way to transition. However, if you want to take advantage of the overseas provisional application, you need to consider the time required for the confidentiality review, and the time required to obtain the confidentiality review according to the timetable provided by the official is about one month. The applicant needs to evaluate whether the complete patented technical solution can be obtained within one month, and if it is indeed impossible to determine the complete technical solution, then the provisional application is indeed a feasible filing strategy. On the contrary, you can directly file a formal patent application in China, and then make overseas layouts in the future.
4. Timing of voluntary modification of the application strategy
Prior to the search, if the European search is to be supplemented, it can be amended on its own initiative through the PCT, in principle, without additional search work by the examiner. In addition, the U.S. system is more flexible, and applicants can file according to their needs, but they need to consider the cost before amending it.
Whether you can make active modifications after the search is as follows:
5. Proactive amendment of the relevant provisions of the application strategy
6. Scope and Limitations of Changes to the Provisions of the Application Strategy
When making overseas layouts, we hope that the scope of patent protection should be consistent, the stability of the patent right is convenient for rights protection, and we will refer to the results of prior patent examination and make voluntary revisions. In the United States, as long as it can be summarized, it can be added to the manual. Europe will be stricter, how to write the description, how to write the claims, to use the same content directly. For embodiments, the claims are directly "copied" from the description, and the situation of "example" of the description "moving" to "embodiment 3" of the claims should not occur.
7. Application for Conflicting Policies
In many cases, it is necessary to consider the issue of conflicting applications, and there will be a series of patent applications for the same scheme and the same inventor, and the issues of conflicting applications and grace periods should be considered in the future.
8. Grace period for applying for a strategy
The United States is relatively lenient in the recognition of grace periods, while in China and Europe, the recognition is strict, including what platform, exhibition level, and institutions that publish literature.
The issue of the object of protection of AI algorithm patents is no longer a problem, it is not difficult to apply for it, but it is difficult to protect rights, and it is difficult to obtain evidence of infringement. The subject matter of protection is actually being relaxed, this year is a year of rapid development of AI, which is making an increasing contribution to the economy, and patents are not exactly a legal field, but an economic tool. In recent years, it can be found that all countries are reducing the difficulty of proving algorithm patents. This trend will become increasingly evident if we continue to encourage AI-based patent filings. Therefore, it is necessary to actively lay out the patent application, handle each case carefully, pay attention to the details of each technical feature, and ensure that the quality of each patent application can cope with the examination standards that may change in the future.
Author: Lei Hanfang
Edited by Eleven