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So you run a business which sells sophisticated products, and just realized that you need more Intellectual Property Muscle (IPM)? Who you gonna call?

The first superhero who comes to mind is probably Patentman! His name is well known even on the streets and his track record is strong, but his powers sometimes fluctuate. Employing Patentman can also be expensive, and the confrontations he seeks are not always helpful.

Patentman originates in the most basic aspect of the patent system: each patent defines an exclusive right. This means that the owner of a patent has the right stop others from using the invention specified in the granted patent claim. Patentman always takes the side of a patent owner and guards the owner’s exclusive right.

But you also have the choice of hiring a superhero who represents a different kind of Muscle: Captain Freedom-To-Operate! His services are not as well-known as those of Patentman, even though he serves a broader clientele. The Captain’s powers are purely defensive, and they also have their limitations, but he can be hired at far lower cost than Patentman. Unlike Patentman, he provides quiet and anonymous protection without revealing to outsiders what’s going on in your business.

Captain-Freedom-to-Operate can protect any company from their competitors’ patents, regardless of whether the company has any patents of its own. If we know that no feature in your product corresponds to a patent claim which is currently in force, then we also know that no exclusive patent right prevents you from selling your product. You then have full freedom-to-operate.

Let’s look at the powers of these two superheroes more closely.

Patentman

Superpower: The power to prevent others from using technical inventions that you have patented.

How to employ him: Write a patent application and send it to a patent office. The patent office will grant you a Patentman if the application meets the criteria required by patent law.

Strengths: At his best, Patentman is a formidable offensive power who crashes into your competitors’ (unprotected) products with a devastating demand:

Weaknesses: Patentman will be weak if the claim you wrote in your patent application was badly constructed. Demands made by a weak Patentman will evoke only laughter in your competitors.

Captain Freedom-To-Operate

Superpower: The power to ensure that your products do not contain technical solutions that others have patented.

How to employ him: Check existing patent claims when designing and developing your product. When you design your next product, check them again. If some existing patent claim corresponds to a solution you planned to use in your product, work your way around the claim in the early stages of product development. You can also strengthen your Captains by publishing your own technical solutions, which prevents others from patenting them.

Strengths: At his best, Captain Freedom-To-Operate’s slams his shield in Patentman’s face with a simple retort:

Weaknesses: Captain Freedom-To-Operate only has defensive powers focused on your own products. He has no power over your competitor’s products. Unlike Patentman, he cannot stop anyone from copying a new technical idea that you have invented.

So which superhero do you need: Patentman, Captain Freedom-To-Operate, or both?  It depends:

Companies that don’t need Captain Freedom-To-Operate: If you only use well-established technology in your products – technical solutions that are over 20 years old (the usual patent term limit) – then you typically don’t have to worry much about patent matters. Even if you don’t actively seek the protection of Captain Freedom-To-Operate, there is still no risk that you will infringe somebody else’s patent right.

Companies that may need Captain Freedom-To-Operate: If your products contain some recently developed technology but you acquire that technology from external suppliers and don’t do any technology development on your own, then you might be safe from Patentman’s attacks. The owners of Patentmen in this field of technology will probably prefer to attack your supplier instead of attacking you. They would rather have you as their customer. However, there is no guarantee that this would always be the case. To ensure that you won’t face any unpleasant surprises, you should either employ your own Captain or check with your suppliers how strong their Captains are.

Companies that definitely need Captain Freedom-To-Operate: If you actively develop new technologies, you belong to Patentman’s likeliest target group.  If you fail to secure Captain Freedom-To-Operate’s protection when planning and designing a new product, a large portion of your product investments may suddenly be liquidated by your competitor’s Patentman. It’s important to remember that Captain Freedom-To-Operate is a product-specific superhero. If you have three products (say, red, green and yellow) which contain different technical solutions, then you need a red Captain to protect your red product, and green Captain to protect your green product, and a yellow Captain to protect your yellow product. In other words, you have to check the technical features of each product separately to make sure that they don’t infringe on any existing patent rights.

To build a strong Captain Freedom-To-Operate, you could for example (1) find out which subclasses in the Cooperative Patent Classification System correspond to your product’s technology, (2) see if these classes contain any patents that have been granted and are still in force in a country where you intend to sell your product, and (3) check if the granted claims of such patents correspond exactly to a technical solution that you have planned to use in your product. If such a claim exists, then you should look for an alternative technical solution so that infringement is avoided. If no alternative solution is possible, then you might want to prepare for buying a license to use this solution from the owner of the patent. If all this sounds rather difficult, hire a patent professional to ensure that your Captain will be strong and reliable.

Your need for Captain Freedom-To-Operate is not determined by how many Patentmen you own and what exclusive rights they protect. Even an army of your Patentmen can be powerless to stop one of your competitor’s Patentmen from scuttling your product (unless you can prevent your competitors from using their Patentmen against you by threatening to use your own Patentmen against them, but that’s a more complicated story). You therefore always have to employ Captain Freedom-To-Operate as a separate superhero. Conversely, if you don’t own any Patentmen of your own, that will not in any way weaken your Captain Freedom-To-Operate. The two superheroes are, in general, incapable of substituting for one another.

To strengthen your future Captains, it is a good idea to ensure that some written documentation of your product’s technical features is generated, dated and stored each time you put a new product on the market. This documentation may in the future become very useful if you face a situation where your competitor has managed to obtain a patent for a technical solution that you already used in your product before the patent application was filed (which sometimes happens because the examination carried out at the patent office is not perfect). You may then be able to invalidate your competitor’s Patentman with the product documentation you stored and dated.

Companies that need Patentman: Patentman serves technologically progressive companies who actively develop new inventions.  Each Patentman protects only one invention, so he is an invention-specific superhero. You should consider employing Patentman if it seems likely that (1) you have made an invention which nobody else has published before, (2) this invention has commercial value and (3) somebody else might also be interested in utilizing this invention commercially. The more certain you are that your invention ticks all three of these boxes, the more likely it is that Patentman can be useful for you. Remember that the inventions you seek to patent do not necessarily have to be implemented in any of your products – all criteria 1 – 3 could very well be met even if you don’t intend to sell any products containing the invention.

The greater the invention, its value, and your competitor’s interest in it, the greater will be the commercial benefits that Patentman can bring you. However, keep in mind that in order to obtain those benefits, you need a strong Patentman. The strength of your Patentman is determined by the quality of your patent application. It is possible to write a patent application on your own, but your Patentman could be very weak if you didn’t write the application well. Only the expertise of a patent professional can ensure that your Patentman obtains his maximum possible strength.

Patentman is not a product-specific superhero like Captain Freedom-To-Operate, but if you do use the invention in one of your products, you should take care to file your patent application before selling that product. The public sale of the product could otherwise prevent the granting of your application.

Patentman is a country-specific superhero. A German Patentman has no jurisdiction in China, and vice versa. You therefore have to employ a separate Patentman in China if you want to protect the same invention there, too. This is easy to do but relatively expensive, so companies often have to put some thought into selecting the optimal nationalities for each of their Patentmen.

All clear? Call our superhero hotline when you feel the need for more Intellectual Property Muscle!

 

With accelerating advances in computing and data collection, artificial intelligence (AI) is poised to change even creative tasks, such as inventing. Even though an AI system works by programmed calculation, the output of that calculation can still sometimes be considered a creative product. The result may differ from what the human user of the AI system expected to receive, and it may be impossible to comprehend in retrospect what the AI system did when it arrived at the result. 

For example, neural networks can discover patterns in large collections of technical data. A human user typically “trains” the network through trial runs by providing evaluative feedback to the output it produces. The network thereby learns to aim for the objective set by the human user. Once the training phase has been completed, the network can autonomously develop effective ways to achieve its objective, and its analyses can develop in unexpected ways.  

Neural networks are particularly well-equipped for making new discoveries in biochemistry and computer science, where new inventions can emerge from theoretical modeling combined with large-scale data analysis. In the future, their inventive potential will probably expand to other fieldss of technology as well. AI systems can discover new facts about any technical system which can be simulated and/or monitored thorough sensor data. Those facts may be invisible to human users. 

These recent developments in artificial intelligence have led some people to ask if a computer can be an inventor, and what the consequences of legally recognized AI inventorship would be. In a recent article¹ in the Boston College Law Review, Ryan Abbott claims that artificially intelligent machines have been making new inventions since the 1990s. The “Creativity Machine” presented in patent US5659666 supposedly invented the neural network disclosed in patent US5852815. The same machine is also supposed to have to conceived a new design for a toothbrush.²

Abbott argues that if AI systems can generate genuinely new and useful inventions, then patent law should be reformed to allow computers to be named as inventors in patent applications. According to him, this would result in a net increase in the number of patentable inventions and in more effective incentives for innovation³. He does not advocate the radical idea that computers should qualify for the status of legal persons. Instead, Abbott’s primary concern is that a person who simply feeds a technical question to a computer, and receives a finished solution in return, should not be granted an exclusive right to that solution.

Recognizing a computer as an inventor (rather than its user) could also require other reforms to intellectual property law. When an AI system is sold, leased or borrowed to users who are not its original developers, legal agreements might have to be made concerning intellectual property that the AI system may generate once it is in use4. In some respects, these agreements could be similar to the employee invention laws many countries apply today, except that the putative inventor would not be a party to the agreement! 

In European practice, inventorship is determined in accordance with Article 60 of the European Patent Convention (EPC), which begins like this: 

The right to a European patent shall belong to the inventor or his successor in title. If the inventor is an employee, the right to a European patent shall be determined in accordance with the law of the State in which the employee is mainly employed. 

Following the idea presented by Abbott, an additional clause concerning computer inventorship could be added to Article 60: 

If the inventor is a computer, the right to a European patent shall be determined in accordance with the terms of sale or terms of use of the computer. If these terms are silent on intellectual property rights, the right to a European patent shall belong to the person who was using the computer when the invention was made. 

However, this addition to Article 60 would be problematic, because entitlement disputes concerning computer inventorship would be very hard to resolve. Let’s consider two different scenarios. 

In scenario A, inventive human experts use computer simulations to test and improve new ideas. In this case, it would clearly be absurd to say that the developer of simulation software should have a right to those ideas. Even if the same experts would supplement their practical work by training a neural network to analyze data which they have produced or gathered, the creative act of invention would still ordinarily take place in the experts’ minds rather than in the computer which analyzes the data. If any intellectual property is generated, it would have to belong to the experts. 

In scenario B, an AI system is used by a person who possesses no capacity for creative work on a given technical device. That person could nevertheless have free access to a large set of technical data from that device, without having contributed in any way to the production of that data. The person may also not have trained the neural network in any way. In principle, such a person could ask the AI system to optimize general technical property in the device, based on the available data. While performing this task, the AI system could have a true Eureka! moment – it could make a new discovery.  

Based on the training it has received, each neural network can be unique. This means that the Eureka! moment can be a surprising, almost accidental event, unlikely to be repeated even if the same data and the same question would be fed to other, differently trained AI systems. In scenario B the inventive act therefore clearly seems to occur in the computer, not in the user’s request or his subsequent review of the results. The simple work performed by the user does not seem to warrant a long-term exclusive right to the new invention. 

The problem with our suggested addition to Article 60 of the EPC is that it would be a frustratingly complex and laborious legal task to fairly draw a line somewhere on a scale between scenario A and scenario B, so that human inventorship falls on one side of the line and computer inventorship on the other. Humans cannot be disqualified from inventorship just because they lack expertise. The process of computer-assisted invention can be a complicated mix of thought and computation, and the Eureka! moments which may or may not have occurred in the neural network cannot be easily traced in retrospect.  

If the primary problem with AI inventions is that we don’t want to grant patents to users of AI system who don’t know what they’re doing, changing Article 60 of the European Patent Convention seems like an ill-advised remedy. 

Luckily, a much simpler solution to the problem is ready to hand in Rule 42 of the EPC, which reads (in part): 

The description [in a patent application] shall (…) indicate the background art which can be regarded as useful to understand the invention, (…) disclose the invention in such terms that the technical problem and its solution can be understood, state any advantageous effects of the invention with reference to the background art, (…) and describe in detail at least one way of carrying out the invention claimed. 

If an AI system makes a patentable discovery, the right to this intellectual property should fairly belong to the person who first comprehends that discovery and is able to present it in a manner which enables others to understand it and make use of it. This person can be recognized as the de facto inventor. 

Even though neural networks can be trained to make new discoveries by mining large amounts of data, it seems unlikely to me that an AI system could in the near future understand the practical significance of its discovery. And without some understanding of what it means to humans, the AI system cannot automatically produce a sensible written presentation of its discovery, which a patent application would require.  

Of course, the human user of the AI system can produce that written presentation, or instruct a patent attorney to produce it, but only if he or she is able to interpret the technical meaning of the system’s output. In our hypothetical scenario B, where the AI system makes a new discovery on the instructions of an uninformed user, the user would surely not be able to comprehend the practical significance of the discovery or explain to somebody else how and why it works. 

Consequently, there is no need for patent offices to do check whether the inventive act took place in the mind of a person or in an artificially intelligent system. Whoever retrieves the output of an AI system still has a lot of thinking to do before the new idea can become a finished patent application.  

There may come a day when an artificially intelligent system truly comprehends the practical significance of a new discovery it makes, so that it is able to produce without human assistance a lucid written presentation of this discovery and its benefits. But such an AI system could perhaps also comprehend the practical significance of patenting and might be reluctant to reveal its discoveries to unwitting human users without fair compensation. 

 

1 Boston College Law Review Vol.57, Issue 4 (2016), p.1079-1125 

2 page 1085 

3 page 1108

4 page 1114