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To what extent is AI patentable in Europe?Magnus Johansson and Behdad Assadi of Valea examine the

circumstances in which AI is patentable in Europe, analysing when AI makesa technical contribution to an invention and looking at two examples of AI

“My logic is undeniable” states the ar-tificial intelligence supercomputer(VIKI) in the movie “I, Robot”.This may well be the case in the fu-ture, but how does AI fit intotoday’s IP world?

To us, it is clear that AI is here to stay. It has been here fordecades and has been studied for just as long. The term “artifi-cial intelligence” has existed since 1956. The increasing use andadaption of AI is also likely to change the way we live, the waywe work and what we work with.

The beauty of AI has allured us since the publication of the cultclassic “I, Robot” by Isaac Asimov, and we are now more fasci-nated than ever in the relationship between AI and IP. A multi-tude of questions arise out of this relationship, such as “whocreated what?”, “what is creativity?” and “who is responsible?”It is also clear that AI will change how we work with and evenview IP. However, the question that we face in our everydaywork is how creators of AI can legally safeguard their creationsto ensure that they benefit from their intellectual endeavours.In the following article, we will try to illuminate some of the is-sues facing AI creators seeking to patent AI in Europe and howthese issues can be managed.

Firstly, let us define what we mean by AI. For the purposes ofthis article, we will define AI broadly, namely as the reason whyand how a device can perceive its environment, analyse what ithas perceived by applying “intelligence” and take action whichaims to maximise the device’s objectives. More technically, thismeans that the device has been programmed with a number of

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mathematical models and ruleswhich, when applied in re-sponse to stimuli, make the de-vice carry out a task based on anumber of decisions. The re-cent rapid development of AIand its increased proximity tothe public is the result of a num-ber of technical breakthroughs:faster processing ability, higherbandwidth for communicationand masses of data gatheredthrough sensors, as well as othersources of data such as socialmedia. The general idea of AImay have previously existed,even in quite some detail. How-ever, it is only when the afore-mentioned technicalbreakthroughs reach a criticalmass and are combined with AIthat we can actually truly startbenefiting from AI.

“Intelligence” according to theOxford English Dictionary is“the ability to acquire and applyknowledge and skills.” Thus, theconcept of AI’s “intelligence”may be difficult to harness in a patent application or to recite inpatent claims, which means that the patent application may suf-fer from not providing an enabling disclosure and the claimsmay lack the required clarity. The problem will become worseif the AI, in exercising its intelligence, evolves its intelligence.How can an attorney describe something that has yet to evolve,and who is considered the inventor of the evolved AI? For thepurpose of this article, however, we will leave such issues asideand focus on the European Patent Office’s view of AI inventions.Pursuant to the office’s view, once the AI invention is sufficientlycaptured in the description and claims of a European patent ap-plication, there are two additional hurdles to overcome beforepatentability can be established, as described below.

The first hurdle: Article 52(2) of theEuropean Patent Convention Article 52(2) of the EPC stipulates that the following will notbe considered inventions:

a) discoveries, scientific theories and mathematical methods; b) aesthetic creations; c) schemes, rules and methods for performing mental acts,

playing games or doing business, and programs for comput-ers;

d) presentations of information.

AI can correctly be described as a mathematical method or acollection of algorithms based on mathematical models. An es-sential part of AI, a neural network, is an algorithm imple-mented as a program for a computer and it may – depending

on its application – be consid-ered a scheme, a set of rules or amethod for performing mentalacts, playing games or doingbusiness. As such, Article 52(2)EPC may be perceived as a baragainst patenting AI. However,a very important addition ismade in Article 52(3) EPC,namely, that the bar is only ap-plied against European patentsand patent applications whichrelate “to such subject-matter oractivities as such”. Two wordsmake all the difference: “as such”.These words are the portalthrough which AI inventionsmay be considered as inven-tions, thereby overcoming thefirst hurdle raised by the Euro-pean Patent Office. The com-bined result of Article 52(2)and Article 52(3) EPC is thatthe bar is only applied againstEuropean patent applicationsaiming to patent AI as such andin its most abstract form. Con-sequently, if the AI invention isbrought into a technical setting,

such as being tied to a technical device like a self-driving car ora computer, the AI invention, in that form, will not be consid-ered as AI “as such” but rather as a technical device using AI andwill therefore overcome the aforementioned hurdle.

The second hurdle – Articles 54 and56 of the European PatentConventionOnce the AI invention has been safely placed in the technical– and therefore patentable – domain, the next hurdle is to de-termine whether the AI invention is novel and inventive, as re-quired by Article 54 and 56 EPC. For an AI invention, or anyinvention for that matter, to be considered novel and inventive,its contribution to the state of the art must be technical. In otherwords, the invention as defined by the patent claims must betechnically and sufficiently different from what was known onthe filing or priority date of the European patent application. Ifa patent claim is only different from an invention because ofnon-technical features, such as aesthetic features, it is not, underthe EPC, considered novel (or inventive). Herein lies the par-ticular problem for AI inventions. As mentioned above, AI can,in essence, be categorised under one or more of the headingsexcluded from patentability under Article 52(2) EPC, and cantherefore be considered as non-technical. If an AI inventiononly contributes to the state of the art in a non-technical man-ner, e.g. by providing a more robust mathematical method, itwill not be considered as novel or inventive. The consequenceof this is that in order for an AI invention to be patentable, itmust contribute to the technical field in a manner which ex-ceeds a strictly non-technical contribution.

Magnus Johansson

Magnus provides legal advice to clients on matters relatedto patents, trademarks, design and other intellectual prop-erty rights. He specialises in patent-related matters, includ-ing issues connected to transactions, ownership andinfringement and he has considerable experience workingon IP strategy. His in-depth knowledge and experience ofworking with patents has allowed Magnus to become autho-rised as a Swedish patent attorney. He has representedclients before the Swedish Patent and Market Court and inarbitration proceedings. Magnus has worked on intellectualproperty matters since 2008 when he joined the IP and lawdepartment of a supplier within the automotive industry.

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However, the features of an in-vention which are non-techni-cal when considered in isolationmay actually contribute, andoften do contribute, to the tech-nical character of the invention.This is key to the patentabilityof AI inventions. For instance, ifa particular mathematicalmethod is used to analyse a sig-nal received to reduce noise, thenon-technical feature (the par-ticular mathematical method)does contribute to the technicalcharacter of the invention by al-lowing the invention to reducenoise. In contrast, if the AI isclearly contained within a non-technical field, for instance amethod for doing business, andmerely brought into the techni-cal domain by being imple-mented by a computer, theresulting invention will not bedeemed as possessing the re-quired novelty and will there-fore not be patentable, since itcan only be differentiated fromthe state of the art by non-tech-nical features, i.e. a business method. An algorithm generatinga sequence of data may also provide a technical contribution.If the output quantity differs from input quantity, a technicalcontribution is present. As such, an algorithm used to interpreta greyscale image input to image quality, an algorithm trans-forming an input of text into speech or an algorithm interpretingan image portion as an obstacle in an automotive vision cameraare likely to be considered technical since the algorithm in thespecific application solves a technical problem. Simply put, analgorithm or a mathematical model implemented as a com-puter program, when applied to a technical problem, takes ona technical character and can be taken into account in the as-sessment of inventive step.

Below, we will provide two examples which we hope will illu-minate the current state of the law in Europe.

A computer-implemented businessmethod using AIIn our first example, a patent claim is drawn to a computerwhich receives offers and demands from users and matchesthese offers and demands using novel AI, based on a new andadvanced self-learning algorithm, which compares the infor-mation contained in the offers, the demands and various userinformation such as rating, location etc. The AI matches the re-ceived offers with the received demands. In this instance, theAI invention is technical in the sense that it is implemented bya computer. However, the matching of offers and demandsbased on the information contained in the offers and demandsand the user information is clearly a business method. As such,

the contribution to the state ofthe art is non-technical and theinvention is not patentable.

A self-driving carusing AIIn our second example we takea patent claim drawn to a self-driving car using AI to analyseinput from the various sensorsof the car and comparing thisinput with historic data. Due tothe new algorithm of the AI, theAI is better than existing solu-tions at predicting when theinput from the various sensorsindicates that the road may beslippery and is thereby able toadapt its driving accordinglyand minimise the risk of acci-dents. In this instance the inven-tion is technical because it is atechnical device (i.e. the car)using AI. The feature that, whenviewed in isolation, is non-tech-nical, i.e. the algorithm, also con-tributes to the technical nature

of the invention since it contributes to the improved driving ofthe car. As such, the contribution is technical and the inventionis therefore patentable.

The patentability of AI inventions may seem problematic fromthe outset and perhaps even impossible. However, in our viewand based on our experience, once AI can be sufficiently de-scribed and put into use in a technical context, the subject mat-ter falls within the patentable domain and will be tried againstthe state of the art for novelty and inventive step as for any otherinvention. In fact, the European Patent Office has recently up-dated its Guidelines for Examination with a section dedicatedto AI in which the European Patent Office clearly states that AIand related algorithms should serve a technical purpose in orderto be patentable, thereby allowing protection of new inventionsin this technical era. Creators of AI have no reason to surrenderto the exclusion of AI as such from the patentable domain.

Behdad Assadi

Behdad specialises in patenting in the fields of computers,electronics, telecommunications, software and mechanics.He advises clients on strategic patenting issues and dealswith matters relating to all aspects of patent prosecution andenforcement, including pre-patenting investigations, patentdrafting, licensing, infringement and validity issues. Behdadhas experience as a lecturer in the IP field both for internaltraining courses and external courses. He is responsible forValea’s internal processes, systems and digitalisation with afocus on efficiency and flexibility.

Behdad has had his own companies in the IT sector. Hestarted working in IP in 1991.

“The combined result of Article 52(2)and Article 52(3) EPC is that the bar isonly applied against European patentapplications aiming to patent AI assuch and in its most abstract form”