JAPAN INTELLECTUAL PROPERTY ASSOCIATIONASAHI SEIMEI OTEMACHI BLDG.18F
6-1 Otemachi 2-chome
Chiyoda-ku Tokyo, 100-0004, JAPANTEL: 81 3 5205 3321
FAX: 81 3 5205 3391
URL: http://www.jipa.or.jp/February 14, 2020
JIPA's comments on Draft Issue Paperfor WIPO Conversation on IP and AI

1. Introduction
The Japan Intellectual Property Association (JIPA) is a
non-governmental organization representing the world’s largest
number of IP system users. With 1,300 member companies andorganizations from 12 countries, JIPA members file about 20% of PCT
applications worldwide. With respect to the Issue Paper summarizing
issues to be discussed in the WIPO Conversation on IP and AI, thisis a timely effort by WIPO to invite opinions from all over the world,
forming an important foundation for future discussions. We are very
grateful for the opportunity to submit our opinions as a user.

2. Premises of JIPA's opinions
The Conversation deals with a wide range of AI and IP related1issues. In particular, we understand that, for inventions
autonomously generated by AI (hereinafter, referred to as“AI-autonomous inventions”), core issues include: eligibility of an
AI as inventor, independent of human beings; how these AI should beprotected; and what distinguishes them from inventions generated
merely with the support of AI (hereinafter, referred to as “AI-assistedinventions”).
The impacts of recognizing AI as inventors on the social economy,
entire legal system and ethics have not yet been well evaluated, while
drastic developments in technologies continue. In light of this,JIPA considers premature the introduction of measures to recognize
AI-autonomous inventors and legislation for the protection of theirinventions. Further, this fundamental view of JIPA applies not only
to the Patent Act, but also the Copyright Act and Design Act.
In order to determine whether or not the protection ofAI-autonomous inventions is necessary, a common frame of reference
must be put in place, such as terminology or technologies which areregarded as premises, and to investigate and analyze them.

2First, we must know what precisely is meant by “an AI autonomouslygenerates an invention.” For this, it is useful to verify how humans
are involved in specific cases concerning AI-autonomous invention,and to then scrutinize whether such involvement precludes
AI-autonomous inventors. Formulation of a common understanding on
what an AI-autonomous invention is allows it to be distinguished fromother inventions.
In addition, if discussions are conducted on the assumptionthat a time will certainly come when AI-autonomous inventions aregenerated, analyses should be conducted to identify possible adverse
effects under the existing legal systems and, from an industrial policy
viewpoint, what merits and demerits might arise from differently
protecting AI-autonomous inventions.
If indeed they are to be protected, important points for further
examination include whether it is consistent with existing IP law,which protects creations by humans: legal paradigms subject tosignificant consequential impact will extend beyond IP. Similarly,
as with AI-autonomous inventions, a root and branch study will also3

be required in the copyright field, from both industrial and cultural
policy perspectives.
We consider that organization and analysis of the above points
and subsequent evaluation of any social impacts of AI technologies
should be followed by wide ranging discussions among experts in various
fields to determine necessary measures. Moreover, as an IP systemuser, JIPA intends to be actively engaged in said discussions.

3.

Modification of Issues(1) Issue 1/Paragraph 6: Understanding of AI-autonomous inventions(Comment) The paragraph states without strong grounds that “it would
now seem clear that inventions can be autonomously generated by AI.”
(Explanation) Though announcements have surfaced stating that some
AI had autonomously made an invention, some argue that such AI does
not yet exist since it has not objectively been demonstrated thatan AI has autonomously operated to generate an invention. Others
further argue that, since nobody has indicated the path by which it
will be developed, such an AI is decades away.

4

In these circumstances, it appears invalid to state that “itwould now seem clear that inventions can be autonomously generated
by AI.” Even if studies are to be made as hypothetical discussions
on the assumption that AI would autonomously generate inventions
sometime in the future, WIPO should elucidate its definition of“autonomously,” as used in the phrase “inventions autonomouslygenerated by AI”; irrespective of whether or not autonomously generated
inventions have already occurred, or are yet on the horizon. It is
desirable to update the Issue Paper based on the views or assumptions
on such issues WIPO will show.
(Draft for modification)
6. In most cases, AI is a tool that assists inventors in the invention process
or constitutes a feature of an invention. In these respects, AI does not differ
radically from other computer- assisted inventions. However, it would now seem
clear that inventions can be autonomously generated by AI, and there areseveral reported cases of applications for patent protection in which theapplicant alleges that an invention has been autonomously generated andtherefore has named an AI application as the inventor. On the other hand, somebelieve that an AI capable of generating inventions autonomously remains
decades away. In the Issues Paper, we discuss the issues based on theassumptions that….. (WIPO’s views or assumptions continue)5(2) Clarification of terminology:i) “Algorithm” (Issue 4)(Comment) The term “algorithm” diminishes the clarity of this Issue.
A definition of “algorithm” is required: alternatively, assuming thatit refers here to a “trained model” (AKA “pre-trained model,” “learnedmodel,” etc.), the term “trained model” with its definition should
be used.
(Explanation) The term “algorithm” generally indicates a procedureor method for problem solving, and a program is created by writing
source code to implement said algorithm. “Algorithm,” as used in
discussions on AI, can sometimes indicate such a program, but cansometimes indicate a trained model that includes weighted parameters
defining how to drive a program. Further, in some cases it indicatesa program or machine learning tool that employs learning from datato generate a trained model. In Issue 4(ii), assuming that repetitionof machine learning causes continuous changes, “algorithm” seems toindicate a trained model.

6ii) “AI invention,” etc. (Issues 3, 4, 5, 11)(Comment) “Invention autonomously generated by AI” and “AI-assistedinvention” are intuitively distinguishable from each other. However,in other cases, the syntax is much less clear, e.g. “invention generatedby AI,” “AI inventions,” etc. For example, it is difficult tounderstand whether “invention generated by AI” is synonymous with
“autonomously generated invention,” or also whether “AI inventions”
refers to an AI technology-related invention or an invention generated
by use of AI.

(3) Issue 10(Further Rights Protection in Relation to Data):(Comment) Opinions are expressed, some for and some against theprotection of data, based on a new right (including protection basedon a weak right, not an absolute exclusive right). However, the issues
in the current WIPO Issue Paper are formulated so as to generate deep
discussion into the protection mechanism, with the starting premisethat data should indeed be protected. We believe that discussion
from both positions should be promoted by re-formulating the Issue

7

Paper to include issues:(Example) Concerns that undesirable chilling side effects will occur
bring about opposition to giving new rights beyond current patent
law, unfair competition law, contractual arrangements andtechnological measures in order to protect data. What new protections
might be added and what adverse effects might thereby result?

4. Items to be added to Issues(1) Issues 1, 6 and 11: The necessity of an oath and proof of human
involvement in creative activities
Item to be added: Current laws do not protect AI-autonomous inventions,but do protect AI-assisted inventions. If a position not to protect
AI-autonomous inventions is established under these laws, and also
under future laws, should a system wherein an applicant actively takes
an oath be introduced?
(Explanation) If AI does in fact become capable of autonomously
creating inventions and it is clearly stipulated that autonomously
generated inventions are not protected, then, considering the purpose8

of the law, in legally protecting an invention that was not createdby humans, adverse effects may result. If so, AI-autonomous
inventions have to be excluded from protection. In addition,
examination authorities may find it difficult to determine whether
or not an invention is an AI-autonomous invention. Further, anapplicant may take a false oath stating that an invention is not anAI-autonomous invention.
Declaring opposition to a patent or requesting invalidation ofa patent based upon whether or not an application is an AI-autonomous
invention would present a quandary to the examining authority or court.
To avoid actualizing such disputes, ex-ante regulations may be worth
considering. For example, a system wherein an applicant actively
takes an oath could be possibly introduced. Under this system, anoath from applicant should be mandated stating that the application
is not for an AI-autonomous invention, a punishment should beestablished under the law for false oaths, and the applicant shouldbear the burden of proof in defending their rights. Whether tointroduce such system, however, should only be considered after

9

identifying both the problems the introduction of such system would
solve and any adverse effects which might arise.

(2) Issue 5 (General Policy Considerations for the Patent System):i) Item to be added: If a right is bestowed to protect AI-autonomous
inventions, should said right be exclusive, as under current law?
(Explanation) Regarding future policies on IP law, it will be important
to study whether or not to contribute to the implementation of values
common to humans, such as SDGs. The progress of AI will undoubtedly
produce a previously unimaginable explosion in new inventions,worsening the existing thicket of patents. Since it is necessary
not to obstruct innovations that support sound developments forhumans,how best to establish such a right is at issue. Two possible
approaches exist: first, treating as exceptional the scope and effectof rights within the frame of patent law (for example, no permanentinjunctions, shorter patent terms, etc.); second, creation of a suigeneris, or separate law.
ii) Item to be added: Will a large increase in AI-assisted inventions

10change the purpose of patent law and the role of the system?
(Explanation) Even if AI-autonomous inventions remain fictional asyet, AI-assisted inventions are already fact. It seems reasonable
to handle AI-assisted inventions in the same manner as existing
software inventions. However, it is likely that technologicalevolution and diffusion of AI in the future will produce a lot ofinventions easily and simply, with consequential reductions indevelopment costs. In such a case, is it still necessary to encourage
investment in the future through state incentives?

(3) Issue 8 (Deep Fakes):i) Item to be added: Should legal protection of works created by deep
fakes be rejected? If so, based on what law?
(Explanation) Because deep fakes are created on the basis of original
performances, they can be considered to infringe original copyrights
or related rights. If so, should the protection of deep fakes as
new performances be rejected under the copyright law? Is theprotection of deep fakes rejected based on other laws also?

11ii) Item to be added: In dealing with problems related to deep fakes,what role can IP law play, including copyright law?
(Explanation) Deep fakes can have significant social impacts and cancause problems, not only regarding the protection of right holders
based on IP law, but also legally protected interests concerning
individuals, such as personal rights, privacy, defamation, and furtherconcerns regarding social order and national security. Some of such
performances seem to present problems within the frame of IP rights,
but is there any role that can be fulfilled by IP law to solve them?

(4) Issue 12
Item to be added: It is highly likely to be the courts that determine
how to protect AI-autonomous inventions. What preparations can bemade to facilitate just judgements?
(Explanation) It is often difficult to conduct hypothetical, abstract
studies on future events: here, whether or not AI-autonomous inventions
should be protected, and if so, what protection is necessary. Thus,
there is a good chance that an AI-autonomous invention is actually12

generated and its protection is determined in a judgement on a specificcase made at the court (or possibly at ADR or ODR) after all facts
are presented and contested. It is entirely possible that a disputemay come before the courts which is beyond their current capacity
to handle in terms of specialization or workload when the issues are:whether an invention is an AI-autonomous invention, which is determined
after evaluating the degrees of involvement by a human and thecontribution of an AI; or how “an inventing AI” should be recognizedin contrast to “an inventing human.” In anticipation of such asituation, making preparations to enable a court before which a disputemay be brought to render an appropriate judgement is clearly important.
In order to form a future institutional design, it is desirable to
make clear rules for judges to deal with AI based on current practiceand the capacity of the courts, and further establish a dispute
resolution mechanism to negate this difficult issue appearing before
a court.

13

(5) Issue 13
Item to be added: Accountability with respect to the use of AI is
not only an issue in examining patent applications, but also in making
broad decisions by the legislative, administrative and judicial
branches. What accountability exists specific to the examinationof patent applications, and what accountability is required more
broadly in various related situations?
(Explanation) Transparency is required in every sphere where AI isused, such as by governments, companies, universities, organizations,individuals and others. It is important to study accountability inpatent applications and related processes. Moreover, concurrent study
at national institutions involved in IP of accountability related
to the use of AI would be desirable.

Sincerely,Yuji Toda
President
Japan Intellectual Property Association14