Artificial Intelligence In Patent Law

Starting from the recent case of UK Supreme Court in Thaler v. Comptroller General (2023) UKSC 49, wherein, the issue came before the Court in light of granting patents to machine made inventions. This case concerns two British patent applications for two inventions that Dr. Thaler stated in his application, were created by an AI machine known as DABUS. Pursuant to Section – 13(2) of 1977 Act, the UK Intellectual Property Office (UKIPO) refused the applications on the ground that DABUS is not a person, as envisaged by sections 7 and 13 of the 1977 Act. Thereafter, this decision of UKIPO was challenged by way of appeal before the High Court and the Court of Appeal respectively. However, both these appeals were dismissed. Subsequently, when the case was presented in the Supreme Court, while dealing with such issue, the Court has explicitly affirmed that a machine invented or devised product or process cannot be patented. But is that enough? Gradual shift in geo-politics and the emergence of new world order demands a comprehensive model to engage with relevant stakeholders for mitigating the fundamental challenges and complexities that are attached to AI generated ideas in the advanced digital-age environment. Just ascertaining the inventor in AI invention is not sufficient. The threat and intricacies which AI faces at the moment is immensely worrisome. Online platforms and networks have become a crucial part of everyday life. Making use of AI on such space can have serious implications. Therefore, it is important to ensure that the changes brought about by these developments do not have the scope to disrupt the very foundation of such change.

What is Artificial Intelligence?

Though, there is no fixed definition but it simply means “intellectual ability developed artificially.” Through this, a computer system or the robotic system is created and processed to run on the basis of same logic, on which, the human brain works. In other words, it is a machine-software combination.

What It Takes To Be Qualified As Inventor In India Under Patent Law?

Section – 2 and Section – 6 of the Indian Patent Act, 1970 enumerates the criteria for recognizing an inventor and the person as an applicant who can file for a patent in Indian Jurisdiction. Currently, it excludes, among other things, business method inventions or a computer programs “per se” or algorithms from patentability (as per Section – 3 (k)). Moreover, Section – 3(k) has a long legislative history. In case of Ferid Allani v. Union of India and Ors (2019) SCC Online Del 11867, the Delhi High Court has categorically held that in today's digital world, when most inventions are based on computer programs, it would be retrograde to argue that all such inventions would not be patentable. The bar on patenting is in respect of 'computer programs per see…' and not all inventions based on computer programs.

Additionally, Section – 2 (1)(s) of the Patent Act states that the person who is filing for a patent can either be a natural person or any Govt Organization. However, the definition of person is not just limited to the aforesaid meaning. It can also include anybody or anything construed as the first and true inventor of the invention as a 'person' for whom a patent application is being submitted. Nonetheless, the recent objections to AI by the Controller General of Patents suggest that recognizing AI as an inventor still fall short of being claimed as inventorship rights in India.

Tests of Patentability

Determining the requirement for a particular patent may at times appears complex. However, the basic condition i.e., mixed question of law and fact remains the backbone for making any subject known and attributable under the Patents Act. These tests of patentability have been demystified by the Hon'ble Justice Pratibha M. Singh in her book on Patent Law. They are as follows:

• Is the invention new – i.e., Is there any cognitive leap over and above what existed before?
• Would a person working on the respective subject/ area/ field be able to arrive at the invention without too much effort?
• Can it be put to some use?

Relevant Reports

In 2021, the Government of India has constituted the Parliamentary Standing Committee under the Department of Commerce to review the Intellectual Property Rights regime, wherein, in particular, it examined the challenges that presently exist in the current legislative framework of the country. In this regard, the U.S. Chambers of Commerce in its 10^th edition of the International IP index, has admired the 161^st Report as a 'welcome development' and 'a first major attempt at assessing the India's IP policy regime'. The observations /recommendations related to AI in Intellectual Property Rights (IPR) in para's 3.8 and 3.12 are quoted herein below:

“……The Committee is of the view that the increase in application of Artificial Intelligence (AI) based tools such as Aarogyasetu, CoWin, etc. in recent times for utilizing and extending essential services implies the likely surge in AI based patent filings in the days to come. Hence, granting proprietary rights to AI innovators and protecting AI driven innovations by enforcing regulations and standards in the country should be the way forward. The Committee, therefore, recommends that the department should channelise efforts to encourage and empower AI innovators by enacting suitable legislations or modifying the existing laws on IPR in order to accommodate AI based inventions….” (para 3.8)

……. “The Committee notes that the dissolution of IPAB would lead to transferring of all IP-related appeals including the pending cases to High Courts and Commercial Courts (in copyrights matters). This may create additional burden on such courts which are already reeling under huge backlog of cases with inadequate expertise in hand to deal with IPR matters. It, therefore, opines that establishing an Intellectual Property Division (IPD) with dedicated IP benches as done by Delhi High Court in the wake of abolition of IPAB would ensure effective resolution of IPR cases on a timely basis. The Committee, therefore, recommends that the Government should take appropriate measures to encourage setting up of IPD in High Courts for providing alternative solution to resolve IPR cases.” (para 3.12)

Way Forward

Takeaway from this should be to develop strong safety nets as we move towards witnessing a transformative global advancement in AI-generated tools. Considering its ethical implications is a key to ensure AI-based tools are developed and used responsibly. Furthermore, investments in research & development must be increased in order to facilitate advanced tech-learning and market driven solutions in this dynamic environment by directing the bigger companies to contribute their certain percentage of shares of profit towards corporate social responsibility and processing to allocate those funds in every Govt. Department and Research bodies. Moreover, promoting IP financing is another prospect of discussion, which should be timely assessed to use such approach in availing the capitals by using IP as collateral for Banks. Additionally, it is also suggested that primary concerns like job displacement, proliferation of misinformation and preservation of research integrity have to re-engineered to incorporate AI alongside humans. Working on all these measures will ensure to make data and algorithms more accountable by creating supportive institutional infrastructure coupled with legislative modifications and amendments, that can enable better transparency and give protection to innovations by initiating safeguards in its creation and deployment.

In view thereof, it is proposed to establish a comprehensive model considering the human-led-development-growth to make it efficient, sustainable and user-friendly in the era of tech sphere that are about to witness a new innovation and increased automated occupations in the history of human race. Though, there have been many changes in patent law regime in India, which led to an improvement of India's ranking in the Global Innovation Index. But we still need stimulus to compete with nations like US and China.

The author is an Advocate on Record at Supreme Court of India. Views are personal.