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/

November 30, 2020
Mr. Tim Moss
Chief Executive and Comptroller GeneralIntellectual Property Office
Concept House, Cardiff Rd,
Newport, South Wales, NP10 8QQ
United Kingdom

Re: JIPA Response to the Artificial intelligence call for views

Dear Mr. Moss,
We, the Japan Intellectual Property Association “JIPA”, are one of the world's
largest organizations of IP users with about 970 major Japanese companies as
members. When appropriate opportunities arise, we offer our opinions on theintellectual property system of other countries and make recommendations formore effective implementation of the systems.
(http://www.jipa.or.jp/english/index.html)
Having learned the Artificial intelligence call for views on your website, wewould like to offer our response as follows.
Your consideration on our opinions would be greatly appreciated.
Sincerely yours,

Yuji TODA
President
Japan Intellectual Property Association

Patents
1. What role can/does the patent system play in encouraging the development and use of
AI technologies?
We consider that AI technologies contribute to industrial developments.

In these latterdays of remarkable advancements of AI technologies, protection of AI technologies isabsolutely essential for promotion of the development of AI technologies.
However, it is also considered that some institutional designs may result in theblocking of industrial developments.

It is necessary to give careful consideration to an AI

invention-related institutional design including the point of whether or not AI is identified as
an inventor as mentioned in other comments.

2. Can current AI systems devise inventions? Particularly:(a)to what extent is AI a tool for human inventors to use?

We consider that the current AI systems have not reached the level where theyautonomously generate inventions.
Under the current circumstances where a human makes an input with the
expectation of obtaining an output of interest and makes a careful examination or the likeon an output during utilization of AI, Ai is merely used as a tool; and we consider that aninvention is devised and embodied by a human and feel that an invention generated by AI
should be an extension of an idea of humans.
Meanwhile, we consider that when AI has completed an invention in a state where
no human is involved therein, AI is beyond the role of a tool and generates an invention.

(b)

could the AI developer, the user of the AI, or the person who constructs thedatasets on which AI is trained, claim inventorship?

When a person involved in solution to a specific problem has made a contribution as aninventor, we consider that the person is entitled to be an inventor in any case in light of thecurrent eligibility for an inventor.

On the other hand, if a general-purpose AI isconstructed in the future and a new era has come when a new invention for solving a
specific problem is made with no human involvement, a developer of that general-purpose
AI or a user of the AI not involved as an inventor in making the invention has made no1 / 16

contribution to the invention, and thus they should not claim inventorship.

(c)

are there situations when a human inventor cannot be identified?

As described in the above a), AI alone cannot generate an invention and humans are
involved.

In addition, no sufficient explanation is made for the situation where a human is

not eligible as an inventor although the human has been involved.

Therefore, it is

impossible to perceive what situation is indicated by the expression "when a humaninventor cannot be identified."

3. Should patent law allow AI to be identified as the sole or joint inventor?
Because AI has not yet reached a technical level where it generates an invention, it isconsidered premature to identify AI as a sole inventor.

Meanwhile, assuming that AI

contributes to an invention, a cautious discussion is considered necessary on how to
identify an inventor and who to attribute the right to.

Before consideration of a system on

the AI-intellectual property relationship, there is a concern on the fact that impacts over thesocioeconomy, the legal systems including acts other than the patent law, and the ethics
have not been evaluated appropriately.

The point that AI holds a property right or bears

legal responsibility is not sufficiently examined.

4. If AI cannot be credited as inventor, will this discourage future inventions being
protected by patents? Would this impact on innovation developed using AI? Would there
be an impact if inventions were kept confidential rather than made public through thepatent system?
As mentioned in the above 2a, AI alone cannot generate an invention at present and ahuman is identified as an inventor; and thus inventions can be protected under the current
laws.

Then, we consider that failure to identify AI as an inventor does not discourage theprotection of inventions.

5. Is there a moral case for recognising AI as an inventor in a patent?
(N/A)

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6. If AI was named as sole or joint inventor of a patented invention, who or what should beentitled to own the patent?
To clarify a subject of discussion, it is necessary to classify AI outputs depending on whether
or not a human is involved therein, and to look closely into both a definition and a definedterm therefor.

In an AI-involved invention, the inventorship is classified into three items

based on the concept of the current law: (1) a person with inventorship is involved; (2) aperson without inventorship is involved; and (3) no human is involved.
Among these items, item (1) is considered in the same manner as that in operationof the current system, and an inventor can be identified.

Regarding items (2) and (3), weare not yet in a situation where an inventor can be defined, and a cautious discussion
should be made.

7. Does current law or practice cause problems for the grant of patents for AI inventions in
the UK?
As mentioned in the responses to other questions, we consider that the current laws candeal with the problems.

We consider that inventions with AI involved would be addressedin the same manner as computer software-related inventions.
It seems that software-related inventions including AI-related inventions are moredifficult to grant than applications using the EPC route.

It is of a problem that the routedifference greatly affects a decision on whether or not an application is granted, and it isexpected to harmonize with EPO.

8. Could there be patentability issues in the future as AI technology develops?
The inventorship, the description requirements (support requirement, enablement
requirement, etc.) or the inventive step would possibly be of a problem.

In addition, theexamination guidelines may be different depending on the country, and we consider that itis necessary to consider harmonization.
When AI is identified as an inventor, one AI may be involved in a quite wide range of
inventions.

We consider that it is necessary to study whether such a case may cause aloophole in the current law including the requirement of the same inventor (system
including the requirement of the same inventor, etc.).
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In addition, it seems necessary to study, for example whether AI inventions are
distinguished in such a manner that a name of a system or identification information
thereof is given to each AI, and whether inventions generated by the same system have thesame inventor even when users of the system are different.

Further, it is considered thata remarkable change will occur in the determination of the inventive step.

9. How difficult do the list of excluded categories in UK law make it to secure patent
protection for AI inventions? Where should be the line be drawn here to best stimulateinnovation?
(N/A)

10.

Do restrictions on the availability of patent rights cause problems for ethicaloversight of AI inventions?
(N/A)

11.

Does the requirement for a patent to provide sufficient detail to allow a skilled

person to perform an invention pose problems for AI inventions?
In answering this question, you may wish to consider:• is it clear how much information would be sufficient for a skilled person to be able to work
the invention?

• could there be uncertainty knowing when an AI could be obtained by a skilled person toachieve the specific purpose of a patent claim and when an AI would need to be specified ina patent application?

• what are the consequences if the details of AI algorithms need to be disclosed?
• if AI is making decisions in a black box:
AI inventions should be handled in the same manner as conventional
computer-related inventions, and the contents to be disclosed may vary depending on thesubject matter of an invention.

In addition, undue requirements such as disclosure of alearning dataset itself may discourage filing (publication) of applications for AI-related
inventions, thus hampering the development of AI technologies.

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- Could there be a need to disclose more than a basic trained AI model, for example training
data or the coefficient or weight of the model? If yes, is it clear how much information would
be sufficient for a skilled person to be able to work the invention? Are special provisions
needed for this information to be filed and stored?
It is not considered essential to disclose training data itself, weight itself of the AI
model, etc.

Disclosure of all of training data is not necessary, and it is enough as long as

data necessary to satisfy the reproducibility is disclosed.

Regarding inventions using AI, if,

in general, the format of training data (e.g., what are an explanatory variable and a
response variable), the type of an algorithm of an AI model (e.g., supervised learning,
unsupervised learning, information on CNN, LSTM, etc.) or the like is disclosed, it isconsidered that an invention can be worked (undue trial and error or experiments are notrequired) by the technical capability ordinarily exhibited by a skilled person.

- What would be the effect if competitors could use data to quickly train a different AI
model?
The industry-wide technical level seems to be improved immeasurably.

An

increase in improvement inventions is expected, and this will allow later applications to bepossibly advantageous.
Meanwhile, it is likely that it will be difficult to differentiate from competitors, andthus the number of companies that employ a strategy to make their technologies secret
may be increased.

- How would the skilled person know whether the invention could be repeated across thebreadth of the patent claims or whether a claimed result could be achieved?
If experimental data supporting the entire breadth of the patent claims is disclosed
or it is logically described that the contents of Examples can be extended (e.g., variations in
the type of data, and variations in the algorithm of a model) in line with the breadth of thepatent claims, then it can be determined that a skilled person can reproduce the invention.

12.

In the future could there be reasons for the law to provide sufficient detail of an AI

invention for societal reasons that go beyond the current purposes of patent law?
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(N/A)

13.

Does or will AI challenge the level of inventive step required to obtain a patent? Ifyes, can this challenge be accommodated by current patent law?
As a skilled person promotes AI use, the level of the inventive step will be enhanced
relatively.

However, we consider that this can be accommodated by reviewing thestandards of a skilled person while taking AI use into consideration, and that no immediate
legal revision is required.
It will be necessary to discuss whether a human can determine the inventive step ofan AI invention.

14.

Should we extend the concept of "the person skilled in the art" to "the machine

trained in the art"?
As described in the responses to the above questions, a cautious consideration of thedefinition of a skilled person is needed.
15.

Who is liable when AI infringes a patent, particularly when this action could not havebeen predicted by a human?
We consider that a company using AI assumes part of the responsibility, but where theresponsibility rests should be flexibly determined depending on the form of infringement.

16. Could there be problems proving patent infringement by AI? If yes, can you estimate
the size and the impacts of the problem?
We consider that such problems will arise. It seems difficult to confirm the entity of
infringement and the size thereof (to what extent AI is involved in infringement).

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Copyright
1. Do you agree with the above description of how AI may use copyright works anddatabases, when infringement takes place and which exceptions apply? Are there othertechnical and legal aspects that need to be considered?
Regarding the issue on AI's use of copyright works, we agree to collect a wide range of
opinions and to start and deepen discussions with the aim of finding balanced outcomes
which benefit owners and users of copyright works. JIPA considers that under the current
circumstances where evaluation of an impact given on society by the progress of AI
technologies has not yet fixed in the course of rapid and continuous evolution oftechnologies, it is premature to determine a policy to be taken on the legal handling ofparticularly works produced by AI beyond the rules of the current copyright law.

First, it isimportant to sufficiently organize, analyze and evaluate the points listed in this Openconsultation (the concept of originality, the grasping of who is involved in what way, etc.).

Meanwhile, as the premise for studying this question, it is necessary to divide "The use of
copyright works and data by AI systems" into the following two aspects and study them.
(1) Aspect where a work is used in the process of AI learning(2) Aspect where a trained AI (consequently) uses an existing work when it creates a work

Then, the above item (2) should be further classified into the following cases depending on
the creation process of a generated work (AI-generated work).
(2-1) Case where a human uses AI and creative contribution of the human is found(2-2) Case where a human uses AI but creative contribution of the human is not found(2-3) Case where no human involvement is foundThe above cases are taken into consideration, and then, it is necessary to study the way of
being a right that is given to a work generated by using an AI system, the presence orabsence of infringement, and rules for restricting a right.

2. Is there a need for greater clarity about who is liable when an AI infringes copyright?
If a legislative constitution is established such that an AI action falls within a third party's
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copyright infringement, the judgement criteria should be clarified so as not to hamper thedevelopment of AI technologies or culture. However, attention is needed to avoid: a casewhere a person that should intrinsically have the responsibility is exempted; or a casewhere a person that should not be responsible is held (excessively) responsible.
Further, if a copyright of an AI-generated work is permitted, one possible option is that aright and a responsibility are treated as a unit such as a case where a person having the
copyright thereof should take a responsibility for infringement.

3. Is there a need to clarify existing exceptions, to create new ones, or to promote
licensing, in order to support the use of copyright works by AI systems? Please provide
any evidence to justify this.
As described above, studies should be made on the following two aspects.
(1) Aspect where a work is used in the process of AI learning
The Digital Single Market Copyright Directive established in April 2019 stipulates that
lawfully acquired works can be reproduced (Article 4) for the purposes of not only scientificresearch (Article 3) but also text and data mining of works (any automated analyticaltechnique aimed analysing text and data in digital form in order to generate information
which includes but is not limited to patterns, trends and correlations (Article 2 (2)). The
directive obliges each of EU Member States to introduce the above regardless of being a
profit-making or not-for-profit basis.

In addition, the Copyright Act in Japan also stipulates that when a work is used with the
purpose of information analysis (meaning the extraction, comparison, classification, orother analysis of the constituent language, sounds, images or other elemental data from alarge number of works or a large volume of other such information), the work can be
reproduced and so on (i) if the use of the work has the purpose of personally enjoying or
does not have the purpose of causing another person to enjoy the thoughts or sentiments
expressed in the work, (ii) if it is within the extent considered necessary, and (iii) if it does
not unreasonably prejudice the interests of the copyright owner in light of the nature or
purpose of the work, and the circumstances of the use (Article 30 quater (2)).

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As described above, it is assumed that such use of a work allows the social significance or
the public interest to be more significant than disadvantages to copyright owners, and thus
it is considered highly necessary to provide rules for restricting copyrights.

(2) Aspect where a trained AI (consequently) uses an existing work when it creates a work
Not only the degree of human involvement in AI-generated works as described in the above(2-1), (2-2) and (2-3) but also objective elements such as the similarity or dependency
between an AI-generated work and an existing work should be taken into consideration.
Based on that, careful consideration should be given to a comparison between
disadvantages to copyright owners and the social significance or the public interest, andstudies should be made on what rules for right restriction are appropriate or what licensing
system is appropriate; and thus, we consider that it is premature to form a conclusion at
this time.

4. Is there a need to provide additional protection for copyright or database owners whose
works are used by AI systems? Please provide any evidence to justify this.
As described above, studies should be made based on the following two aspects.
(1) Aspect where a work is used in the process of AI learning
Regarding the use of existing works, it is assumed that the social significance or the public
interest is more significant than disadvantages to copyright owners.

Therefore, it isconsidered highly necessary to provide rules for restricting copyrights while it is consideredless necessary to provide additional rules for protection of existing copyright owners.

Meanwhile, if data is leaked to be unintentionally used on a large scale by unauthorizedaccess of a third party to a server storing learned works, it may be difficult to provide ex
post relief to copyright owners, and thus attention needs to be paid to this point.

(2) Aspect where a trained AI (consequently) uses an existing work when it creates a work
Not only the degree of human involvement in AI-generated works but also objective
elements such as the similarity or dependency between an AI-generated work and an
existing work should be taken into consideration.
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Based on that, careful consideration

should be given to a comparison between disadvantages to copyright owners and the social
significance or the public interest, and studies should be made on what protection is needed,
and thus it is premature to form a conclusion at this time.

5. Should content generated by artificial intelligence be eligible for protection by copyrightor related rights?
To study this question, it would be appreciated if you would teach us the situations after"Protection for computer-generated works" introduced in 1980 in UK was applied.
Specifically, Copyright, Designs and Patents Act 1988 stipulates that "Computer-generated
works" are defined by stating "the work is generated by computer in circumstances suchthat there is no human author of the work" (Article 178); and an author thereof is the"person by whom the arrangements necessary for the creation of the work are undertaken"(Article 9 (3)). Then, please explain how the above articles have been applied on theadministration of justice such as what fact is needed to prove or disprove for allegation of
the ownership of a right, or practical analysis results on the entity of right ownership, whichof (i) AI developer, (ii) a creator of learning data and (iii) an AI user has been identified as
an author. In addition, an institutional design is desired to be internationally harmonised,
and then, it would be much appreciated if you would provide an explanation on youranalysis on why other countries do not follow this article.

6. If so, what form should this protection take, who should benefit from it, and how longshould it last?
As described above, AI-generated works should be classified into the following cases andstudied.
(2-1) Case where a human uses AI as a tool and creative contribution of the human is found
Even when the position is taken based on either of the Common Law and the Civil Law, thisAI-generated work deserves the protection under the copyright act because the creative
contribution of the human as an AI user is found.

Therefore, we consider that theidentification of the AI user as an author according to the existing rules is not a problem.

(2-2) Case where a human uses AI as a tool but creative contribution of the human is not
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foundBecause creative contribution of an AI user is not found, no right of an AI-generated work
should be granted to the AI user.

In addition, at this time, it is unclear how the protectionof AI-generated works would contribute to appropriate development of technologies orculture, and thus it is premature to form a conclusion.
Meanwhile, it is inferred that in UK, there is room for a copyright owner of an original work,
an AI developer, a creator of learning data and others to be identified as an author of an
AI-generated work according to the rule "person by whom the arrangements necessary forthe creation of the work are undertaken," and then, it would be appreciated if you would
teach us how the rule is applied practically.

(2-3) Case where no human involvement is foundSame as above.

7. Do other issues need to be considered in relation to content produced by AI systems?
• Risk that an AI-generated work is disguised as a "human-created work"
If AI-generated works are protected in a different manner from human-created works, it isconsidered that there is the problem of how an AI-generated work is distinguished from ahuman-created work, and that an AI-generated work may be intentionally disguised as ahuman-created work and exploited.

8. Does copyright provide adequate protection for software which implements artificial
intelligence?
It provides adequate protection.

No particular difference is found from software

embedded in an ordinary system.

9. Does copyright or copyright licensing create any unreasonable obstacles to the use of AI
software?
They do not create any obstacles.

No particular difference is found from software

embedded in an ordinary system.

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Designs
1. Do you agree with the analysis above which concludes that it is not possible for AI to be
the author or owner of a UK or Community design?
We agree.

The current law was established on the premise that an author is "a human"

and thus "AI" which is not recognised legally as "a person" should not be an author or an
owner.

2.

Are there, or could there be, any tensions with the current legislation when seeking toregister a design or be recognised as the owner of an AI-created design? Who would be
the legal entity applying for the rights?

The current law was established on the premise that an author is "a human," and thus if"AI" which is not recognised legally as "a person" is treated as an author or an owner, aninconvenient situation may occur. Under current circumstances, we consider that it isreasonable that AI-created designs should be protected within an applicable scope of thecurrent law without revising it.

The legal entity that can apply for the rights should be anowner of an AI system, and "a natural person," "a company," "an organization" or "aninstitution" which provides an input or data to the system and is directly involved in thecreation of the design.

3. Who should be recognised as the author of a design created by AI where the system has
been bought from a supplier, and the buyer has provided input or data to the system?
Does the wording of legislation need to be changed?
The current law was established on the premise that an author is "a human," and thus "apurchaser" who provides an input or data to the system and is directly involved in thecreation of the design should be recognised as "an author" of the design.

4. Do you consider that legislation should be changed to allow AI systems to be recognised
as the author of a registered design or designer of an unregistered design?
We consider that AI systems should not be recognised as an author of a design, and thus nochange is needed at this time.

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5. If so, how should we assess when AI stops being a tool programmed by a human andbecomes an intelligent entity capable of producing its own IP? What proof or evidence
would be required?
Under current circumstances, involvement of a natural person is needed for AI to generateintellectual property; and it is premature to discuss an author, etc. on the assumption that
AI by itself will be able to produce intellectual property.

6. Unlike UK domestic legislation, the CDR has no provisions relating specifically tocomputer-generated designs. Does this result in legal uncertainty in relation toauthorship and ownership of computer-generated designs? Would the same apply to
AI-generated designs?
The CDR is based on the premise that an author is "a human," and thus regarding acomputer-/AI-generated design, as long as a natural person directly involved in thecreation of the design is an author/right owner, "legal uncertainty" would not be brought
about.

7. Are there any other issues in relation to the CDR which we should consider in relation toAI?
Because AI is not recognised as "a human" under the current law, we consider that AI
cannot implement the above action.
8. Can the actions of AI infringe a registered or unregistered design? Can AI do the acts set
out in law?
(N/A)

9. When considering infringement are there, or could there be, any difficulties applying
existing legal concepts in the registered designs framework to AI technology? Does AI
affect the use of the "informed user" in measuring overall impression?
(N/A)

10.

If AI can infringe a registered design, who should be liable for the infringement?
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Should it be the owner, the programmer, the coder, the trainer, the operator, theprovider of training data, or some other party?
(N/A)

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Trade marks

1. If AI technology becomes a primary purchaser of products, what impact could this haveon trade mark law?
Even if AI mediates the action of purchasing, the action of purchasing itself should
be recognised as a human action, and thus it is necessary to restrict such a trade mark or
use thereof that may mislead AI in a way that causes damage to an AI user.

2. Are there or could there be any difficulties with applying the existing legal concepts intrade mark law to AI technology?
Even if AI implements the action of purchasing, the liability therefor and the gain orloss therefrom is held by a human using the AI; and thus there is no impact on the trade
mark law.
At present, there are many cases where AI is utilized to perform specific tasks;
however, in the future, AI may evolve in such a way that it can address various problems as
can a human or make a comprehensive determination with a human-like consciousness.
Therefore, it is considered that careful studies should be made in the medium to long term.

3. Does AI affect the concept of the "average consumer" in measuring likelihood ofconfusion?
The criteria for judgment on the confusion of AI, which performs the action ofpurchasing in a liable manner as described above 1, are different from the criteria forjudgment on the confusion of a human, and thus there is no impact on the concept of the"average consumer."
Note that it is considered that the future development of AI may require study of thecriteria for judgment on the confusion of AI in the same manner as described in the second
paragraph of the response to Question 2.

4. What is the impact of AI on the drafting of section 10? Can AI "use in the course ofbusiness" a sign which may be confusingly similar or identical to a trade mark?
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If this implies a case where AI is a seller and uses a trade mark that confuses
consumer, the entity that causes AI to use it in such a manner is a human, and thus section
10 may stand as it is.
Note that if the future AI development may raise a doubt in judging theinfringement on AI-mediated actual transactions as described in the second paragraph ofthe response to Question 2, it is considered that it may be necessary to consider, forexample, clarifying "A person," the subject of section 10.

5. Can the actions of AI infringe a trade mark?
If AI creates a trade mark or a service mark by itself, the trade mark or service markwould be unintentionally similar to an existing trade mark, and thus they could do so.
However, the liability therefor should be taken by a human using the AI.

6. If AI can cause trade mark infringement, does this shift who could be liable? Should it be
the owner, the operator, the programmer, the trainer, the provider of training data, orsome other party?
Regarding who should be liable, all of the parties involved in the action of AI
including a human using the AI that has caused trade mark infringement should be liable,
and it is desirable to provide a system that gives rise to an appropriate liability depending on
the degree of the involvement thereof or the benefit received.

（EOD）

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