Partners James Short, Simon Binnie, Howard Sands and Jason Pelly contributed to IAM’s recent article on ‘How to register AI patents in Asia-Pacific and Europe: the dos and don’ts’. 

The lack of harmonisation when it comes to the patentability of AI-related inventions makes registering rights in this space ever more challenging. As rapid technological advancement must, by its very nature, outpace legislation, this leaves a swathe of critical innovations in a grey area when it comes to protection. 

The article reviews the prospect of registering such innovations at the EPO.  

Short, Binnie, Sands and Pelly delve into patenting challenges at the EPO, discussing the EPOs definition of ‘technical’  and the requirements that an invention must be ‘technical’ or have ‘technical character’. 

They also discuss the inventive step, the importance of drafting and how it’s almost always the one chance of ‘getting it right’.

They predict that – if considered care is taken – the EPO will “remain consistent and fair in their examination of such cases”. “European patents for innovative enhancements to the underlying AI and ML technology should be granted, while merely applying known techniques to new problems may struggle.” AI and machine learning are key driving forces in what may turn out to be the next technological revolution. For those innovating in these fields, strong and effective IP protection is essential. “This often includes the need to obtain patents that not only survive first contact with the patent office but are also robust enough to stand up to post-grant challenges and subsequent litigation.”

Other topics discussed are assessing eligibility of AI applications in China and the inventorship question in South Korea.

Read the full article here: How to register AI patents in Asia-Pacific and Europe: the dos and don’ts - IAM (iam-media.com)

The first edition of the Patent Prosecution Review dives into the hottest issues facing IP professionals around the world, revealing the latest hurdles that applicants must overcome in Australia, China, Europe and South Korea, as well as how to ensure success in these jurisdictions.