Protection of IPRs Relating To Computer Based Innovations
The question considered in Thaler vs. Vidal, No.21-2347 (Fed.Cir.) by the U.S.
Court of Appeals for the Federal Circuit was about the patentabiity of AI
Software (Artificial Intelligence Software) as an inventor. The Delhi High Court
touched upon this aspect in its Writ Petition 7/2014 and decided on 12 December
2019 in the case of Ferid Allani vs. Union of India.
In the U.S. case (aforementioned) two patent applications where an AI system was listed as the sole inventor were refused by the U.S. Patent and Trademark Office (USPTO). The USPTO found that both applications were incomplete because they lacked a valid inventor. According to the USPTO, the U.S. Patent Act limit[s] inventorship to natural persons. Dr. Stephen Thaler, who filed the patents on behalf of his AI system, filed a series of appeals until the case reached the Federal Circuit.
On appeal, the Court affirmed the district court's holding that an AI could not be listed as an inventor on a patent application because the Patent Act requires that inventors must be natural persons. The Federal Circuit agreed with the USPTO's conclusion that the Patent Act expressly provides that inventors must be individuals. Because the Patent Act itself does not define the word individual, the Federal Circuit relied on the U.S. Supreme Court precedent in Mohamad v. Palestinian Auth., 566 U.S. 449 (2012), which explained that when used [a]s a noun, 'individual' ordinarily means a human being, a person.
The Federal Circuit also relied on definitions from the Oxford English Dictionary, Dictionary.com, the Dictionary Act and the Federal Circuit's own precedent in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315 (Fed. Cir. 2013), which held that inventors must be natural persons and cannot be corporations or sovereigns."[i]
Thaler argued in this case that inventor in so far as Patent Act (U.S. Patent Act) includes non-human entities. He also contended that AI should be patentable in order to encourage innovation, public disclosure, progress of science and the useful arts. The Federal circuit rejected these contentions on the ground that these arguments are not persuasive in the light of the provisions of the U.S. Patent Act. When a reference was made about South Africa granted patents to AI as an inventor, the Federal Court opined that South Africa did not make the decision based on U.S. Patent Act.
In India the Computer software is given intellectual protection both by way of Copyright and also by Patents. Copyright is the preferred method in protecting a software programme and patent requires fulfilment of stringent criteria imposed by the Indian Patent Laws. Comparatively, the software under copright has lesser protention than the software under the patents.
Ferid Allani vs. Union of India
A provisional application for patent of a computer program was filed by a Tunisian citizen named Ferrid Allani (hereinafter referred to as petitioner) on 17th July 2002. On 21-02-2005, the FER, the first examination report was issued by the Indian Patent Office recording objections as to lack of novelty and patentability under Section 2 (1) (j) of the Patents Act. On 17-09-2005, the petitioner in the case (Ferid Allani) filed his response to the First Examination Report.
A Second Examination report issued by the Patents Office, on 21st September 2005 again rejected the application on the grounds of non-patentability under Section 3 (k) of the Act. No response was filed by the petitioner to this second examination report as a result, the Patents office office issued an Order of abandonment under Section 21 (1) of the Act, holding that the petitioner's silence is deemed as abandonment under Section 21 (1) of the Act.
Petitioner challenged this Order by a Writ on 6th May, 2006 and the High Court having heard the parties directed the Patents Office to consider a response on Second Examination Report. Accordingly the petitioner submitted written submissions to the Patents office however, the Controller refused the application. In response to this refusal by the Controller an appeal was filed before Intellectual Property Appellate Board (IPAB) by the petitioner and the IPAB dismissed the application on the ground that the application did not disclose any technical advancement or technical effect.
In order to qualify for a patent, an invention must satisfy three conditions viz.
The capability of the invention with respect to the industrial application is requirement under Section 2(1)(j) of the Patents Act. The invention of the petitioner was rejected in First Examination report on the ground that the invention is incapable of Industrial application. Subsequently the application was rejected in Second Examination report under the provisions of Section 3 (k) of the Act, on the ground that the Computer Programme per se is not patentable.
The Controller of Patents office reject the invention claimed in the petitioner's application on the following grounds:
Therefore method Claims as claimed in Claims 1-8 is a computer program and does not constitute to be a patentable invention as defined in Sub-section k of Section 3 of Patent Acts 1970. And Claimed invention in Claims 9-14 lacks Novelty as well as Inventive steps as defined under section 2(1)(j) of the Patents Act1970. In view of my aforesaid findings and circumstances of the case, I refuse to grant the patent on this patent application No. IN/PCT/2002/00705/DEL."[iii]
The IPAB rejected the appeal made by the petitioner on the ground that the invention did not reveal any Technical Advancement or Technical Effect as required by the Guidelines for Examination of Computer Related Inventions (CRI) issued by the Office of the Controller General of Patents, Designs and Trademarks, 2013.
The expression technical effect is defined under the abovementioned guidelines to mean anyone or the combination of the following:
Technical Effect It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome.
A few general examples of technical effect are as follows:
The petitioner argued that the invention applied for patent has technical effect in the sense that it allows the user to have better data base search strategies, more economical use of memory and higher speed etc. He contended that the invention is more than a mere software that is loaded onto the computer and the application does disclose a technical effect and technical advancement.
In response to this the respondent (Union of India) argued that that the present case does not call for any interference under Article 227 inasmuch as the IPAB, which is a technical Tribunal has taken a view in the matter and in writ jurisdiction, the Court is not to re-appreciate the technical arguments raised before the Tribunal.
However, it is appreciable that the Delhi High Court went ahead in adjudicating the matter without allowing itself to be inhibited by the consideration that it is a technical matter already considered by a technical Tribunal, thereby unfolding a new jurisprudence on the subject of patentability of the inventions which were supported by Computer Programmes calling the rejections of such applications on the ground that they violate Section 3 (k) of the Act is regressive.
The court rightly referred to the Report of the Joint Committee on the Patents (Second Amendment) Bill, 1999 which stated that the words per se inserted in Section 3 (k) are intended to facilitate the Patentability of inventions ancillary thereto or developed thereon using computer programmes. In other words, the Computer programmes per se (by themselves) are not patentable but if they are used to invent certain other things, ancillary there to or developed thereon, such inventions can be patented.
The following observations of Delhi High Court in the case are far more progressive than those of the U.S. Court of Appeals in the case of Thaler vs. Vidal[v]:
Moreover, Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of `computer programs per se....' and not all inventions based on computer programs. In todays digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions - simply for that reason.
It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability[vi]
Conclusion
The above observations of the Delhi High Court will go a long way in paving the way for creating a progressive indian jurisprudence in the field of Intellectual Property Rights relating to inventions, technical advancements using Computer programs and Artificial Intelligence applications.
The view that the inventor must be a natural person is a regresssive view in view of the fact that a lot of progress is possible because of the innovations, inventions and technical advancements made by the inventions based on Computer programmes and Artificial Intelligence.
Though the inventor in such cases can not legally be called a natural person, there is a person behind such invention who helped or facilitated the process of these inventions by Computer programmes and AI applications. Including such inventors as juristic persons within the ambit of Copyright Act and Patents Act will promote the cause of fair disclosures by those applying for the Copyrights and Patents.
End-Notes:
In the U.S. case (aforementioned) two patent applications where an AI system was listed as the sole inventor were refused by the U.S. Patent and Trademark Office (USPTO). The USPTO found that both applications were incomplete because they lacked a valid inventor. According to the USPTO, the U.S. Patent Act limit[s] inventorship to natural persons. Dr. Stephen Thaler, who filed the patents on behalf of his AI system, filed a series of appeals until the case reached the Federal Circuit.
On appeal, the Court affirmed the district court's holding that an AI could not be listed as an inventor on a patent application because the Patent Act requires that inventors must be natural persons. The Federal Circuit agreed with the USPTO's conclusion that the Patent Act expressly provides that inventors must be individuals. Because the Patent Act itself does not define the word individual, the Federal Circuit relied on the U.S. Supreme Court precedent in Mohamad v. Palestinian Auth., 566 U.S. 449 (2012), which explained that when used [a]s a noun, 'individual' ordinarily means a human being, a person.
The Federal Circuit also relied on definitions from the Oxford English Dictionary, Dictionary.com, the Dictionary Act and the Federal Circuit's own precedent in Univ. of Utah v. Max-Planck-Gesellschaft zur Forderung der Wissenschaften E.V., 734 F.3d 1315 (Fed. Cir. 2013), which held that inventors must be natural persons and cannot be corporations or sovereigns."[i]
Thaler argued in this case that inventor in so far as Patent Act (U.S. Patent Act) includes non-human entities. He also contended that AI should be patentable in order to encourage innovation, public disclosure, progress of science and the useful arts. The Federal circuit rejected these contentions on the ground that these arguments are not persuasive in the light of the provisions of the U.S. Patent Act. When a reference was made about South Africa granted patents to AI as an inventor, the Federal Court opined that South Africa did not make the decision based on U.S. Patent Act.
In India the Computer software is given intellectual protection both by way of Copyright and also by Patents. Copyright is the preferred method in protecting a software programme and patent requires fulfilment of stringent criteria imposed by the Indian Patent Laws. Comparatively, the software under copright has lesser protention than the software under the patents.
Ferid Allani vs. Union of India
A provisional application for patent of a computer program was filed by a Tunisian citizen named Ferrid Allani (hereinafter referred to as petitioner) on 17th July 2002. On 21-02-2005, the FER, the first examination report was issued by the Indian Patent Office recording objections as to lack of novelty and patentability under Section 2 (1) (j) of the Patents Act. On 17-09-2005, the petitioner in the case (Ferid Allani) filed his response to the First Examination Report.
A Second Examination report issued by the Patents Office, on 21st September 2005 again rejected the application on the grounds of non-patentability under Section 3 (k) of the Act. No response was filed by the petitioner to this second examination report as a result, the Patents office office issued an Order of abandonment under Section 21 (1) of the Act, holding that the petitioner's silence is deemed as abandonment under Section 21 (1) of the Act.
Petitioner challenged this Order by a Writ on 6th May, 2006 and the High Court having heard the parties directed the Patents Office to consider a response on Second Examination Report. Accordingly the petitioner submitted written submissions to the Patents office however, the Controller refused the application. In response to this refusal by the Controller an appeal was filed before Intellectual Property Appellate Board (IPAB) by the petitioner and the IPAB dismissed the application on the ground that the application did not disclose any technical advancement or technical effect.
In order to qualify for a patent, an invention must satisfy three conditions viz.
- Novelty i.e. newness. While examining the patent application, the
invention must answer the following question to fulfil the criteria of novelty. i.e. what
is new at the time of filing the patent application? Or what the inventor has
added to the existing human knowledge on the subject.
- Non-Obviousness:
The invention must contain an inventive step which has not been anticipated by a person skilled in the art.
- Capable of industrial application.
The capability of the invention with respect to the industrial application is requirement under Section 2(1)(j) of the Patents Act. The invention of the petitioner was rejected in First Examination report on the ground that the invention is incapable of Industrial application. Subsequently the application was rejected in Second Examination report under the provisions of Section 3 (k) of the Act, on the ground that the Computer Programme per se is not patentable.
The Controller of Patents office reject the invention claimed in the petitioner's application on the following grounds:
Therefore method Claims as claimed in Claims 1-8 is a computer program and does not constitute to be a patentable invention as defined in Sub-section k of Section 3 of Patent Acts 1970. And Claimed invention in Claims 9-14 lacks Novelty as well as Inventive steps as defined under section 2(1)(j) of the Patents Act1970. In view of my aforesaid findings and circumstances of the case, I refuse to grant the patent on this patent application No. IN/PCT/2002/00705/DEL."[iii]
The IPAB rejected the appeal made by the petitioner on the ground that the invention did not reveal any Technical Advancement or Technical Effect as required by the Guidelines for Examination of Computer Related Inventions (CRI) issued by the Office of the Controller General of Patents, Designs and Trademarks, 2013.
The expression technical effect is defined under the abovementioned guidelines to mean anyone or the combination of the following:
Technical Effect It is defined for the purpose of these guidelines as solution to a technical problem, which the invention taken as a whole, tends to overcome.
A few general examples of technical effect are as follows:
- Higher speed
- Reduced hard-disk access time
- More economical use of memory
- More efficient data base search strategy
- More effective data compression techniques
- Improved use interface
- Better control of robotic arm
- Improved reception/transmission of a radio signal
The petitioner argued that the invention applied for patent has technical effect in the sense that it allows the user to have better data base search strategies, more economical use of memory and higher speed etc. He contended that the invention is more than a mere software that is loaded onto the computer and the application does disclose a technical effect and technical advancement.
In response to this the respondent (Union of India) argued that that the present case does not call for any interference under Article 227 inasmuch as the IPAB, which is a technical Tribunal has taken a view in the matter and in writ jurisdiction, the Court is not to re-appreciate the technical arguments raised before the Tribunal.
However, it is appreciable that the Delhi High Court went ahead in adjudicating the matter without allowing itself to be inhibited by the consideration that it is a technical matter already considered by a technical Tribunal, thereby unfolding a new jurisprudence on the subject of patentability of the inventions which were supported by Computer Programmes calling the rejections of such applications on the ground that they violate Section 3 (k) of the Act is regressive.
The court rightly referred to the Report of the Joint Committee on the Patents (Second Amendment) Bill, 1999 which stated that the words per se inserted in Section 3 (k) are intended to facilitate the Patentability of inventions ancillary thereto or developed thereon using computer programmes. In other words, the Computer programmes per se (by themselves) are not patentable but if they are used to invent certain other things, ancillary there to or developed thereon, such inventions can be patented.
The following observations of Delhi High Court in the case are far more progressive than those of the U.S. Court of Appeals in the case of Thaler vs. Vidal[v]:
Moreover, Section 3(k) has a long legislative history and various judicial decisions have also interpreted this provision. The bar on patenting is in respect of `computer programs per se....' and not all inventions based on computer programs. In todays digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. Innovation in the field of artificial intelligence, blockchain technologies and other digital products would be based on computer programs, however the same would not become non-patentable inventions - simply for that reason.
It is rare to see a product which is not based on a computer program. Whether they are cars and other automobiles, microwave ovens, washing machines, refrigerators, they all have some sort of computer programs in-built in them. Thus, the effect that such programs produce including in digital and electronic products is crucial in determining the test of patentability[vi]
Conclusion
The above observations of the Delhi High Court will go a long way in paving the way for creating a progressive indian jurisprudence in the field of Intellectual Property Rights relating to inventions, technical advancements using Computer programs and Artificial Intelligence applications.
The view that the inventor must be a natural person is a regresssive view in view of the fact that a lot of progress is possible because of the innovations, inventions and technical advancements made by the inventions based on Computer programmes and Artificial Intelligence.
Though the inventor in such cases can not legally be called a natural person, there is a person behind such invention who helped or facilitated the process of these inventions by Computer programmes and AI applications. Including such inventors as juristic persons within the ambit of Copyright Act and Patents Act will promote the cause of fair disclosures by those applying for the Copyrights and Patents.
End-Notes:
- https://www.mondaq.com/unitedstates/patent/1237212/revisiting-ai-inventorship-in-thaler-v-vidal
- https://blog.ipleaders.in/protecting-software-intellectual-property-rights/
- https://indiankanoon.org/doc/90686424/
- Ibid
- https://www.hklaw.com/en/insights/publications/2022/10/revisiting-ai-inteventorship-in-thaler-v-vidal
- ibid
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