Thinking | 19 June 2020
Fighting the coronavirus with Artificial Intelligence: how to solve IP issues on the way to a vaccine
By John Gray and Tamara Charlwood
The scale and intensity of the COVID-19 pandemic have demanded urgent solutions to the problems of detection, diagnosis, treatment and support for front-line healthcare workers. Unsurprisingly, artificial intelligence or AI has been enlisted to find these solutions, with some notable early successes.
Our Technology and Intellectual Property team examines the progress we have made so far and addresses how researchers can claim intellectual property protection over AI-generated solutions to problems created by COVID-19.
Australian researchers have used AI to train clinicians to adapt breast cancer detection techniques for COVID-19 detection. Numerous research projects are using AI to survey scientific literature and genomic datasets to discover the molecular structure of the virus and identify drugs developed for other conditions that may have use in its treatment. AI systems mining Chinese language media may even have been the first to detect the epidemic in Wuhan.
For those invested in using AI to develop COVID-19 solutions, an important question is whether any invention that would otherwise satisfy the statutory criteria for patentability will nevertheless be denied a patent because AI was used.
What is AI?
Broadly defined, AI is a branch of computer science directed to developing systems and machines that can perform tasks normally requiring human intelligence. For example, AI-enabled systems have scanned large amounts of data to gain insights about COVID-19 based on patterns observable in other contexts, mimicking human intelligence. The technology enabling this often involves artificial neural networks or machine learning systems.
Typically, an AI system learns by analysing training examples that are input by human operators, so that eventually, the system can make decisions based on its own past experience. In theory –and more or less in practice – once the machine has been created and trained by humans, it can operate autonomously.
How might researchers claim intellectual property protection over AI-generated solutions to the issues raised by COVID-19? This needs to be considered from three perspectives.
First, there is the computer program that operates as artificial intelligence. In isolation, this would typically attract copyright protection under the Copyright Act 1968 (Cth) but not patent protection under the Patents Act 1990 (Cth) (Act).
Secondly, there is the technique of using AI in a certain way to generate the solution. As mere know-how or idea, a technique would most likely not attract copyright protection. The patentability of such a technique is more difficult to analyse.
For an invention to be patentable in Australia, the Act requires that the invention be new, useful and inventive or innovative. But there is another threshold hurdle – the invention must be a ‘manner of manufacture’ under section 18 of the Act.
Recently, in Commissioner of Patents v Rokt Pte Ltd, the Full Federal Court added further clarity to the distinction between a manner of manufacture and an unpatentable abstraction (such as the business scheme developed by Rokt). This was promptly followed by a single judge of the Federal Court in Aristocrat Technologies Australia Pty Limited v Commissioner of Patents. The cases confirmed that a mere idea or scheme is not a patentable manner of manufacture, and the fact that it can be implemented using computer technology will not make it so.
In contrast, a technique that used an AI program to generate what the cases refer to as ‘an artificial state of affairs in a field of economic utility’ may be patentable. This might include a method for diagnosing or treating COVID in patients.
We then come to the third, and most difficult, aspect of the patentability of AI-generated solutions. What if the solution itself were to satisfy the requirements of being new, useful, inventive or innovative and a manner of manufacture. Would the patent be granted when the solution was autonomously created by AI?
This question brings into focus section 15(1) of the Act, which provides that a patent may be granted to a 'person' who is the 'inventor' or a 'person' who is entitled to have the patent assigned to them. Therefore, only an inventor (or assignee) who is a ‘person’ can be granted a patent.
Neither the term 'inventor' nor the term ‘person’ is defined in the Act, but 'person' would at least have the meaning given in the Acts Interpretation Act 1901 (Cth), where it denotes a 'body politic or corporate as well as individual'. Autonomous AI does not fall within this definition of ‘person’. Australian case law has not yet directly considered this issue but, at present, it appears that an AI system is unable to be considered a ‘person’ and therefore an ‘inventor’ who can own a patent. This is in fact the recently stated position of the US Patent and Trademark Office.
Legal systems the world over have grappled with the patentability of AI-generated inventions. In view of the uncertainty, what can stakeholders do to protect AI-generated solutions to COVID-19?
At a minimum, those who develop and those who wish to own AI-generated solutions can, and indeed should, seek the protection of confidentiality. While the law says a person cannot own bare information, information kept secret is akin to property in the hands of the holder, as only the person who knows the information can make use of it. Further, the law grants protection to confidential information that in many ways is similar to the protection of copyright and patents.
For these reasons, we recommend that where AI is embodied in human-readable computer code and where AI techniques are used to develop solutions, the code and the techniques be protected with a binding non-disclosure agreement. In addition, any solution developed using AI should only be disclosed under the protection of such an agreement until patentability has been fully assessed.
Regardless of the availability of copyright or patent protection, we also recommend that all parties involved in the development and use of AI-generated solutions have a contract that clearly addresses the ownership of the programs and techniques used, and the ownership and use of any resulting work product.
Even if, in a particular case, it is a legal fiction to state in a contract that a solution is ‘owned’ by one or other party, for practical purposes, contractual restrictions on use of the solution by the other party can have almost the same effect.
Hall & Wilcox has broad experience advising on AI, intellectual property ownership and agreements. For more information, please contact John Gray, Ben Hamilton or James Deady.
  FCAFC 86.
  FCA 778
 D'Arcy v Myriad Genetics Inc  HCA 35; see also the factors in National Research Development Corporation v Commissioner of Patents  HCA 67.
 Methods of medical diagnosis and treatment have long been considered patentable. See for example Anaesthetic Supplies Pty Ltd v Rescare Ltd (1994) 50 FCR 1; Bristol-Myers Squibb Co v FH Faulding & Co Ltd (2000) 170 ALR 439; Apotex Pty Ltd v Sanofi-Aventis Australia Pty Ltd  HCA 50.
 For example, courts may grant injunctions to stop the unauthorised use of confidential information, and may order that the unauthorised user account to the ‘owner’ for his or her resulting profits.
 Securing a patent requires that the solution has not been published or secretly used for commercial purposes.
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