Ethics of Data. May 19th 2018. Data Driven innovation 2018. Engineering Department, University of Roma Tre

1. 1/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Patenting Artificial Intelligence and Internet
of Things related Inventions
Andrea Perronace, PhD
Partner
European Patent Attorney
Jacobacci & Partners

2. 2/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Disclaimer
The views and opinions expressed in this
presentation are those of the author and do not
necessarily reflect the official position of the
European Patent Office (EPO) or European Patent
Institute (epi).

3. 3/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Basic requirements for granting a Patent
Eligibility: a priori exclusion by the law
Patentability: requirements
vis-à-vis the prior art
Absolute
novelty
Non-
obviousness

4. 4/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Non‐eligible:
Implements only a
mathematical method and
encompasses execution as a
pure mental act ‐ T914/02
Software eligibility at EPO

5. 5/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
The invention must have a technical character, i.e. a technical
teaching, that is an instruction addressed to a skilled person as
to how to solve a particular technical problem using particular
technical means.
The word “technical” is however not definable (G 3/08).
The invention must bring a further technical effect when
running on a computer, normal currents are not enough
Software eligibility at EPO – cont’d
General guidance and case‐by‐case assessment

6. 6/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Technical problems:
 Controlling an X‐ray apparatus
 Optimising load distribution in
a computer network
 Image denoising
 Compression of audio, image,
video or sensor data
 Encrypting/decrypting
electronic communications
Technical means:
 Sensors, ports, CPU’s
 Data from physical sensors
 Data transmission means
(internet, optical fibers)
 Visualization devices
 Actuators, e.g. motors, arms,
transducers
 Applied algorithms
Software eligibility at EPO – cont’d

7. 7/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Not always clear whether a feature is technical
or non‐technical:
– may depend on context
– to be decided in the course of examination
T641/00
Eligibility vs. Patentability (EPO)

8. 8/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
 Use of devices
 Specific data
 Input parameters correlated
to acquisition means
 Image processing
 Not a mental act only
 Physical output quantities
 Further technical effect
I
F
O
Educational example in software/IoT patenting
Provided with technical character  eligible
(and eventually patentable as well)

9. 9/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Case I F O Eligible
T229/00
Endosonics
Ultrasound
image
Removal of blind
spots by specific
signal amplification
and processing
Ultrasound
image
without blind
spots
YES (inv.)
T1188/04
SHARP
Pointer device
manipulating
icons
Change processing
conditions for the
file ass. to first icon
Differently
processed
file
YES (inv)
T598/07
Cardionetics
Sensor data, n‐
dimensional
vectors
Neural network for
classification heart
cycles
Abnormal
heart cycles
diagnosis
YES (inv.)
Examples from case law – Processing and AI

10. 10/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Some statistics on software patents in USA
(**) © patentlyGerman
(**)
(*)
(*)
(*)

11. 11/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
A fairly well‐defined and stable jurisprudence at EPO
Unstable Guidelines and jurisprudence at USPTO
EPO as a model followed in other jurisdictions (e.g. China)
Global number of software‐related patents increasing
Need for thoughtful drafting and prosecution strategy
Patenting AI and IoT today ‐ Conclusions

12. 12/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
AI‐aided inventions
Personality, Copyright,
Licensing
AI‐generated
inventions
Ownership, Filing,
Reduction to Practice
AI‐based
equivalence
Black Box, Formulae,
Distillation
AI‐performed patent
assessment
Prior art, Infringement,
Evaluation
AI and IoT Patenting Futurology

13. 13/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Providing a clear provision of law regarding Inventorship
Providing a clear provision of law regarding Ownership
of AI‐generated inventions
Setting new standards for prior art assessment
Defining specific patentability requirements for AI and
Big Data
Assessing ethical issues
AI and IoT patenting futurology ‐ Actions

14. 14/1322/05/2018 © 2018 - Andrea Perronace
Patenting AI and IoT related Inventions
Andrea Perronace. European patent attorney. Andrea
received a master’s degree in Physics in Rome and a Ph.D. in
Physical Chemistry in Paris, and has worked for the European
Commission in Brussels. Experienced in patent and design
prosecution and litigation, he is epi ICT Thematic Group full
member involved in EPO Guidelines Group as well.
aperronace@jacobacci.com