Artificial Intelligence (AI) has become one of the most important technologies of the 21st century. AI generally refers to a branch of computer science that simulates “intelligent” behavior in computers and has the potential to greatly affect nearly every aspect of our lives.
This article surveys subject-matter eligibility requirements of AI patent applications in the United States, Europe, and China.
In the United States, the U.S. Patent and Trademark Office determines the subject matter eligibility of computer-implemented patent applications, including AI patent applications, based on Alice and its progeny. This framework inquires whether the claims at issue are directed to a patent-ineligible concept (e.g., law of nature, natural phenomena, or abstract idea), and if so, whether the claims include additional element(s) sufficient to ensure that the claims amount to significantly more than the ineligible concept itself.  The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) has provided guidance as to the patent eligibility of computer-implemented inventions, which also generally applies to AI inventions.  In particular, the Federal Circuit has indicated that claims directed to technical solutions to technical problems and claims rooted in computer technology may have a good basis for patent eligibility.  The Federal Circuit has also indicated that claims reciting features that improve computer performance (e.g., increased computing speed, reduced bandwidth requirements, and reduced storage requirements) and claims reciting graphical-user-interface features may be patent eligible subject matter. 
In Europe, the European Patent Office determines the patentability of computer-implemented patent applications, including AI patent applications, based on a pair of hurdles: an eligibility hurdle (Article 52 EPC), which requires the claimed subject matter to have a technical character; and a patentability hurdle (Articles 54, 56 EPC), which requires the claimed subject matter to contribute a technical solution to a technical problem. Each hurdle can provide obstacles to AI applications. With respect to the first hurdle, Article 52 lists subject matter that doesn’t possess technical character, such as mathematical methods, methods for performing mental acts or doing business, and presentations of information. The second hurdle extends from the first hurdle and further requires that the claim portions contributing to the technical character must also provide an inventive step over the prior art; in other words, those claim portions that don’t contribute to the technical character cannot contribute to the inventive step.
In China, the China National Intellectual Property Administration (CNIPA) determines subject-matter eligibility of patent applications, including AI patent applications, with respect to a technical solution, similar to the EPO. In April 2017, the CNIPA released revised Examination Guidelines that, among other things, describe patent eligibility for software claims in the form of “medium plus computer program process” claims and apparatus claims that recite a component implemented by a computer program.  Previously, software-related claims could include only process claims or “means plus function” claims.  In August 2017, the CNIPA also prioritized examination for Chinese patent applications directed to certain technical fields, including energy conservation, environment protection, new generation information technology, biotechnology, high-end equipment manufacturing, new energy, new materials, new energy vehicles, intelligent manufacturing, internet, big data, and cloud computing. As these changes are relatively new, their overall effect on the eligibility of AI and other computer-implemented inventions has yet to be determined.
As described above, the United States, Europe, and China determine the subject matter eligibility of AI-based patent applications generally within the existing frameworks developed for computer-implemented inventions within each respective jurisdiction. Though the frameworks may have similarities in these jurisdictions, patent applicants must remain cognizant of legal developments in subject matter eligibility and adapt their prosecution strategies accordingly.
 Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014)
 See Enfish v. Microsoft, 822 F.3d 1327 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), and Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018)
This article appeared in the October 2018 issue of Global Patent Prosecution Newsletter. To view our past issues, as well as other firm newsletters, please click here.