Associate Professor Guido Noto La Diega’s Comments on WIPO’s ‘Draft Issues Paper on Intellectual Property and Artificial Intelligence’ (WIPO/IP/AI/2/GE/20/1)

Abstract

This paper has been submitted in the context of WIPO’s public consultation on the ‘Draft Issues Paper on Intellectual Property and Artificial Intelligence’ (WIPO/IP/AI/2/GE/20/1). Whilst WIPO s draft paper is a commendable effort to start a well-evidenced conversation on a matter of the utmost importance, it is open to criticism, especially because it relies on a definition of AI that is, at the same time, vague, too narrow, and too broad. \n \nThis submission answers the following questions: \n \n1) Should the law exclude from the availability of patent protection any invention that has been generated autonomously by an AI application? \n2) Should the law exclude from patent eligibility inventions that are autonomously generated by an AI application? \n3) Should specific provisions be introduced for inventions assisted by AI or should such inventions be treated in the same way as other computer-assisted inventions? \n4) Do amendments need to be introduced in patent examination guidelines for AI-assisted inventions? \n5) In the context of AI inventions, what art does the standard of the person skilled in the art refer to? Should the art be the field of technology of the product or service that emerges as the invention from the AI application? \n6) Should the standard of a person skilled in the art be maintained where the invention is autonomously generated by an AI application or should consideration be given to replacing the person by an algorithm trained with data from a designated field of art? \n7) What implications will having an AI replacing a person skilled in the art have on the determination of the prior art base? \n8) Should AI-generated content qualify as prior art? \n9) In the case of machine learning, where the algorithm changes over time with access to data, is the disclosure of the initial algorithm sufficient? \n10) Does the advent of inventions that are autonomously generated by AI call for a re-assessment of the relevance of the patent incentive to AI-generated inventions? \n11) Is a sui generis right the answer? \n12) Should AI-generated works be excluded from eligibility for copyright protection? \n13) Who should be the author and owner of an AI-generated work? \n \nThe submission concludes with the following recommendations: \n \nA. The scope of WIPO’s policies and documents regarding AI should be better defined by both defining AI and, given that AI is a controversial and fuzzy umbrella term, the focus should be on the main AI technologies, starting with machine learning. \nB. The law should exclude from the availability of patent protection any invention that has been generated autonomously by an AI application. \nC. As for AI-aided inventions, their examination should be stricter and the main means to achieve this end would a shift from the ‘person skilled in the art’ to the AI-enhanced researcher. \nD. Prior art should not be limited to the field of technology of the product or service that emerges from the invention; it should include also the fields that are related to it and may be affected by it. AI-generated content should quality as prior art. \nE. A condition of the renewal of a patent should be the renewed disclosure of the machine learning algorithm as is at the date of the request of renewal. A system of deposit for algorithms, similar to the deposit of microorganisms, would be useful. The data used to train the algorithm should be included in the disclosure. \nF. A sui generis right should be considered as an option both for AI inventions and AI works (collectively ‘big machine data’). Such sui generis right should be accompanied by binding and mandatory fair use provisions; contracts and technological protection measures should not be allowed to sidestep or run counter the sui generis fair use. WIPO should commission legal and economic studies to assess the viability and impact of such a proposal. \nG. AI works fall outside the scope of copyright law. They are not their author’s own intellectual creation, they do not carry their personal touch, nor are they the result of free and creative choices. \nH. AI should not be given legal personality. Such a personality would not cope well with copyright rules and principles and could be used by human infringers to attempt to escape liability.