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 6th, 2019
To: United States Patent and Trademark Office

AIPartnership@uspto.gov
JIPA's Public Comments on "Request for Comments on Patenting AI
Inventions"
Director of United States Patent and Trademark Office
1. Inventions that utilize AI, as well as inventions that are developed
by AI, have commonly been referred to as "AI inventions." What areelements of an AI invention? For example: The problem to beaddressed (e.g., application of AI); the structure of the database on
which the AI will be trained and will act; the training of the algorithm
on the data; the algorithm itself; the results of the AI invention
through an automated process; the policies/weights to be applied tothe data that affects the outcome of the results; and/or otherelements.
We submit that any of the elements that have been illustrated
above can or could be an element of AI inventions.
In addition to the above-illustrated elements, we also submitthat techniques associated with verification of precision of AI, data
augmentation (a technique for expanding the size of a training
dataset by creating new pieces of training data based on a certain
piece of training data), techniques for converting raw data into
appropriate data adapted for learning or training (preprocessing oftraining data), and techniques associated with maintenance of a
trained AI algorithm, and the like can also be an element of an AI
invention.
2. What are the different ways that a natural person can contributeto conception of an AI invention and be eligible to be a named
inventor? For example: Designing the algorithm and/or weighting
adaptations; structuring the data on which the algorithm runs;
running the AI algorithm on the data and obtaining the results.
As long as the actions that are illustrated above areconcerned, we submit that the contribution by the natural person can
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or could be recognized as the basis for the natural person to beeligible to be a named inventor if the natural person performs any ofthese actions.
On the other hand, if a result itself created by running AI is aninvention, then defining the requirements for obtaining the result,designing the AI algorithm, verifying the result, and other relevant
actions can constitute a contribution by a natural person. In themeantime, careful discussions should be made to identify the
specific degree or extent of contribution for an actual act ofcontribution to be evaluated as an inventor's contribution.
Further, we believe that a natural person cannot be an
inventor of an invention that has been conceived only based upon AI,
for he/she does not contribute to the conception of the invention.
3. Do current patent laws and regulations regarding inventorshipneed to be revised to take into account inventions where an entity orentities other than a natural person contributed to the conception of
an invention?
We believe that the invention conceived through contribution
by AI may encompass an invention whose conception is at least
partly based upon contribution by a natural person and an invention
whose conception solely depends upon AI. If "an entity or entities
other than a natural person" such as an AIis recognized as aninventor, then it will follow that the former invention is a joint
invention by an AI and a natural person and the latter invention is aninvention that has only been made by an AI.
With regard to the issue that "an entity or entities other than anatural person" such as an AI should be recognized as an inventor
and an invention whose conception is based on the contribution by"an entity or entities other than a natural person" should beprotected in the same or similar manner as an invention made by anatural person, we hope that careful discussions will be made withthe magnitude of its impact taken into account.
We would like to point out the following problems which may
arise if "an entity or entities other than a natural person" is an AI.
- With regard to handling an AI as an inventor in the same or similarmanner as a natural person, not only will it require extensive legal
amendments, including amendment of the patent laws andregulations, but it will also require a social consensus on
appropriateness of handling AI like a natural person having legal2

rights and obligations. Further, we believe that, if the AI is eligible
as an inventor, then it will be necessary to implement rules for
succession, assignment, etc. of the right to obtain a patent thereon.
- Even when inventorship of AI is denied, an invention that has been
conceived through contribution by AI would be able to enjoy
protection by a patent through amendment of patent laws andregulations to introduce a scheme for creating a right to obtain apatent, which should be inherently vested in or belong to anatural/judicial person that is a person who contributed to creation of
the invention (an algorithm creator, proprietor, trainer, etc. of AI).
Meanwhile, since the degrees of contributions should varydepending on the specific cases, careful discussions should bemade on which person/entity the right to a patent should be
inherently vested in.
- With regard to the issue that an invention conceived throughcontribution by AI is to be patent-protected, if it is not protected at all,then there will be a possibility that a natural person cannot exercise
the right to obtain a patent belonging to him/her for a joint invention
by an AI and the natural person, in addition to which anotherpossible problem may arise that the AI's contribution to the invention
is concealed and granting of a patent is sought therefor in the guiseof an invention that is only made by a natural person.
4. Should an entity or entities other than a natural person, or
company to which a natural person assigns an invention, be able toown a patent on the AI invention? For example: Should a company
who trains the AI process that creates the invention be able to be anowner?
We believe that who the inventor is will have a significant
impact in the determination of who should be an owner of a patent ofan AI invention.
AI inventions may be classified into the following types or
categories: (i) AI algorithm inventions, (ii) inventions associated withlearning methods of AI, (iii) inventions associated with use of AI, (iv)inventions conceived through contribution by AI, and the like.
Here, with regard to the inventions falling under the types (i)to (iii), a natural person who performed the corresponding act should
become an inventor to whom the right to obtain a patent thereforshould be inherently vested in. In this case, the patent holder will
be eventually determined in accordance with the agreement
between the natural person and the company.
3On the other hand, in the case of the type (iv), since an AI is
not eligible to be an inventor under current patent laws andregulations, even a company that owns the AI and has trained it
cannot be an assign of the right to obtain a patent of an invention
conceived through contribution by AI, and consequently there would
be no one who could be a patent holder for that invention.
A possible approach for solving the problem that arises in thecase of the type (iv) seems to be introduction of a scheme thatallows a company that trained the AI illustrated in the text of Q4
above to own a patent. Meanwhile, as has been stated in Q3, in
this case, careful discussions should be made about to whom theright to obtain a patent should be inherently vested in or belong to.
5. Are there any patent eligibility considerations unique to AI
inventions?
We believe that the patent eligibility regarding an AI invention
should be determined in the same or similar manner as in the caseof a software-related invention.
In the field of AI, since many companies have beendeveloping technologies that apply AI to devices and services using
learning algorithms provided as open source software (OSS) and its
platforms, we hope that such technologies (inventions related to use
of AI) will be properly protected. Currently, while Example 39 is
illustrated in the 2019 Revised Patent Subject Matter Eligibility
Guidance (2019 PEG) for determination of patent-eligibility of
inventions related to learning methods of AI, we submit that there
are no examples of determination made in relation to inventions
associated with use of AI.
Accordingly, we hope that how
patent-eligibility of an invention related to use of AI is determinedshould be clarified using both case examples where patent-eligibility
is recognized and case examples where patent-eligibility is denied.
In particular, we respectfully request that the specific framework ofdetermination be clarified regarding whether or not an invention
related to use of AI is integrated into a practical application (2AProng 2).
We note that, according to 35 U.S.C. 101, an invention
eligible for protection needs to be not only novel but also useful, so
that, in some situations of inventions conceived through contribution
by AI, an applicant may have difficulty in sufficiently recognizing andexplaining the utility in this meaning of the invention. We believethat careful discussions should be made regarding expansion of the4scope of protection to cover such an invention.
6. Are there any disclosure-related considerations unique to AI
inventions? For example, under current practice, written description
support for computer-implemented inventions generally requiresufficient disclosure of an algorithm to perform a claimed function,such that a person of ordinary skill in the art can reasonably
conclude that the inventor had possession of the claimed invention.
Does there need to be a change in the level of detail an applicant
must provide in order to comply with the written description
requirement, particularly for deep-learning systems that may have alarge number of hidden layers with weights that evolve during thelearning/training process without human intervention or knowledge?
We submit that examination of AI inventions should proceed
in the same or similar manner as in the conventional"computer-implemented inventions."
Meanwhile, in determination of the written description support,
it will be necessary in the future to discuss whether or not thecapability of AI should be taken into account to determine the abilityof "a person of ordinary skill in the art." In addition, if the capability of
AI is to be taken into account to determine the ability of "a person ofordinary skill in the art," we believe that a possible problem to beaddressed is how the level of learning of AI at the time of filing of theapplication should be recognized in the examination.
We also note that AI inventions may include incomplete
inventions that include desires, hopes, or wishes, which implies thatthe examination needs to be carefully conducted.
7. How can patent applications for AI inventions best comply with theenablement requirement, particularly given the degree of
unpredictability of certain AI?
We submit that examination of AI inventions should proceed
in the same or similar manner as in the conventional"computer-implemented inventions."
Meanwhile, in determination of the enablement requirement,
it will be necessary in the future to discuss whether or not thecapability of AI should be taken into account to determine the abilityof "a person of ordinary skill in the art." In addition, if the capability of
AI is to be taken into account to determine the ability of "a person ofordinary skill in the art," a problem to be addressed would be how
5the level of learning of AI at the time of filing of the application
should be recognized in the examination.
We also note that AI inventions may include incomplete
inventions that include desires, hopes, or wishes, which implies thatexamination needs to be carefully conducted.
8. Does AI impact the level of a person of ordinary skill in the art? If
so, how? For example: Should assessment of the level of ordinary
skill in the art reflect the capability possessed by AI?
In the future, it will be necessary to discuss whether or not
the capability of AI should be taken into account to determine theability of "a person of ordinary skill in the art." As discussed above, if
the capability of AI is to be taken into account to determine the abilityof "a person of ordinary skill in the art," we believe that a possible
problem to be addressed is how the level of learning of AI at the timeof filing of the application should be recognized in the examination.
9. Are there any prior art considerations unique to AI inventions?
While the prior art for AI inventions can be handled basicallyin the same or similar manner as in the cases of software-related
inventions, it will be desirable that situations be avoided where priorart documents in different technical fields are cited just because AI isapplicable in various fields, which may lead to the consequence that
non-obviousness of inventions related to AI applications is hardly
recognized.
Meanwhile,in recent years, AI that generates prior art ascountermeasures against a non-practicing entity (NPE) or for any
otherpurposehas
also
appeared
(All
Prior
Art:
https://allpriorart.com/about/). Regarding such prior art documents
created by AI, the speed of creation thereof is much higher than the
speed at which a human makes an invention and the quantity
thereof is enormous, whereas description and illustration of theirtechnical aspects may be insufficient. We respectfully request thatthe description of any prior art documents generated by AI be
sufficiently scrutinized if such a document should be cited in theexamination.
10. Are there any new forms of intellectual property protections thatare needed for AI inventions, such as data protection?
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AI inventions may be classified into the following categories:(i) AI algorithm inventions, (ii) inventions associated with learning
methods of AI, (iii) inventions associated with use of AI, (iv)inventions conceived through contribution by AI, and the like.
With regard to the inventions falling under the types (i) to (iii),
we believe that these inventions are protected as a patent whose
inventor is a natural person in a conventional manner but, withregard to the invention of the type (iv), careful discussions should bemade regarding whether it should be protected by an intellectual
property right such as a patent.
11. Are there any other issues pertinent to patenting AI inventions
that we should examine?
We would like to present the following requests.
- If arrangements regarding handling of inventions conceived
through contribution by AI do not progress, there is a possibility thatcases will increase where a usurped application is filed by a natural
person claiming that he/she invented the invention by false
declaration. Further, if the criterion is ambiguous regarding thedegree or extent of contribution that a natural person should makeso as to be eligible as an inventor of an AI invention, then there may
be cases where usurped applications are filed due to erroneousrecognition. We respectfully request that rules be formulated forsolving these problems.
- If an invention conceived through contribution by AI should beprotected, then there may be an increased number of patentapplications related to incomplete inventions that include desires,
hopes, or wishes, so that we respectfully request that a patentshould not be granted to such inventions.
- Resources should be prepared which allow prior art documents
created by AI to be sufficiently evaluated and recognized.
- In order to obtain predictability of outcome of AI invention
examination, we respectfully request that not only the guidelines
associated with patent eligibility stated in Q5 but also the guidelines
for examiners on how the AI inventions should be specificallyexamined be formulated and that such guidelines be disclosed toapplicants as well.
12. Are there any relevant policies or practices from other major
patent agencies that may help?
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We believe that the JPO's examination guidelines for AI
inventions and the like will be helpful. Regarding handling of AI
inventions, we hope that systems will be harmonized in close
cooperation with patent offices in other countries.
We respectfully request your careful consideration of the above
comments at your decision on Patenting AI Inventions.
Yours faithfully

Yuji TODA
President
Japan Intellectual Property Association

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