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Patenting Artificial Intelligence

January 05, 2018

Artificial intelligence (AI) and its applications are the focus of many emerging companies and many new products across a diverse number of fields. As such, it’s natural to consider whether patent protection may be available for various AI innovations.

First, as with any other kind of invention, an AI innovation must be new, useful and non-obvious in order to eligible for a patent. Second, for any claimed invention to be patentable it must encompass patent-eligible subject matter. Since AI involves the use of computers, a quick review of the general state of subject-matter eligibility for computer-related inventions in Canada and the United States may be in order.

In Canada, patent office policy regarding computer-implemented inventions was clarified following the successful appeal of the rejection of a patent application by Amazon.com related to their “one click” ordering technology. Following its loss in the case, Canada’s Patent Office published new guidance that, broadly speaking, considers computer-related subject matter to be patent eligible if the solutions provide by a claimed invention to a problem addressed by its patent application are such as to strictly require the use of a computer.

In the United States, the law changed with the decision of the Supreme Court of the United States in Alice v CLS Bank (“Alice”). The USPTO follows the two-part test set out in Alice in deciding whether a given invention is patent eligible. That test requires determining whether the claims are directed to a law of nature, a natural phenomenon, or an abstract idea. If so, then the claimed invention will only be considered patent eligible if it can be said to amount to “significantly more” than the ineligible concept. The precise contours of what is and is not “significantly more” remain the subject of judicial debate, however recent court decisions have begun to give some clarity on the issue.

AI innovations may be roughly divided into two categories: first, new or improved artificial intelligence techniques such as, for example, refinements to machine learning techniques; and, second, applications of known artificial intelligence techniques. Each of these categories may give rise to different patentability concerns.

In Canada, the situation is relatively favourable to both categories—in each, if the application includes sufficient detail regarding how a particular artificial intelligence technique works or how such techniques are being applied to a particular problem so as to justify the requirement for a computer, there is a good chance an examiner may be persuaded that the claimed subject matter is patent eligible. Accordingly, patentability for AI related inventions in Canada will, in many cases, turn on whether the technique or the application of AI techniques in a particular application can be considered new and non-obvious in view of the prior art.

In the United States, the situation may vary between the two categories.

Regarding the first category, there is case law suggesting that specific improvements in computer technology (including in software) may be considered non-abstract and may thus succeed in being considered patent-eligible subject matter at the first stage of the Alice test. Accordingly, if a particular new or improved AI technique can be considered an improvement in computer technology, the availability of a patent may turn on prior art considerations.

Subject-matter eligibility of inventions in the second category must be assessed on a more case-by-case basis. On the one hand, if the task being performed by the AI is an abstract technique previously performed manually, then it may be difficult to show the claimed invention amounts to “significantly more” than the abstract idea. On the other hand, however, there is case law suggesting that automating a task previously performed by humans using a new, distinct process may be patent-eligible subject matter. If an examiner can be convinced that the latter proposition applies in a given case then the availability of a patent may again turn on prior art considerations.

In summary, a patent may be available for many AI related inventions in both Canada and the United States.