HUMAN INVENTORSHIP IN EUROPEAN PATENT LAW

This article uses the advancements in artificial intelligence as the starting point for consideration of the role of human inventorship in European patent law. It argues that human inventorship is a necessary condition for the existence of an invention and inventive step, with the result that only products of human inventorship merit European patents. It identifies failings of European authorities to reflect this adequately in their approaches to determining patentability. Finally, it recommends recognising human inventorship as an implicit patentability requirement being an aspect of the statutory requirements for an invention and inventive step and extending applicant's disclosure duties correspondingly.

Patentability and PHOSITA in the AI Era—A Japanese Perspective

Although it may not be clear whether AI may generate the invention autonomously without human intervention, recent development of AI produces inventions of AI technologies such as machine learning (deep learning). Inventors also have begun to use AI as a tool to help them create inventions. These AI-assisted inventions raise the urgent and practical issues of patentability such as patentable subject matter (patent eligibility), disclosure requirements, and inventive step (non-obviousness). The Japanese Patent Office (JPO) updated the Examination Handbook to address some of the issues. For instance, they discussed to what extent inventors should disclose in patent applications because AI as a black box does not explain how the problems are solved. However, the JPO did not pay much attention to the possibilities that not only inventors but also a person having ordinary skills in the art (PHOSITA) might use AI and PHOSITA with the aid of AI could create the inventions more easily, thereby raising the level of inventive step. This chapter critically reviews the JPO’s updated Handbook and discusses whether and how we can take into account the use of AI by PHOSITA in examining inventive step.

Um estudo comparativo da determinação de requisitos de etapas inventivas no Irã e nos EUA

Assessment of the Inventive Step Requirement is one of the most sensitive and difficult stages in statutory invention registration. Different requirements are taken into consideration in determining if this requirement is satisfied. Such requirements are divided to two categories – primary and secondary− per the Patent Law practiced by United States Patent and Trademark Office. The studies show that the mentioned assessments are easier in US compared to European countries for in those countries the precision and solidarity in practicing the inventive step requirement is more compared to US. In Iran, contrary to the mentioned cases, the assessment is not done in the Patent Office by the experts but rather by the verification the office conducts from the Universities and Science and Technology Parks of the country wherein, due to lack of knowledge about the Patent Law, the assessment is not done precisely; an issue which can accentuate the outlook appertaining to oneness of innovation and inventive step in the process of assessment. The present paper attempts at studying the patent law in Iran and US in order to put forward the criteria which is practices in assessing the ‘inventive step’ in the Iran Intellectual Property Office (Patent Subdivision) and United States Patent and Trademark Office.

No Need for ‘Plausibility’ in German Patent Law

In the case law of the Boards of Appeal of the European Patent Office (EPO), increasing importance is being attached to the concept of ‘plausibility’, which, however, has no literal basis in the EPC. Nevertheless, many decisions in which inventive step (Art. 56 EPC) is assessed address the question of whether the claimed solution was at least ‘plausible’ at the effective date. For medical use claims, a ‘plausibility test’ is even performed for assessing sufficiency of disclosure (Art. 83 EPC). Starting from this example, the following article shows why German patent law does not need ‘plausibility’.

UTILITY MODEL PROTECTION - TRENDS IN THE EUROPEAN UNION AND CHALLENGES FOR UKRAINE

The issue of utility model (UM) protection in Ukraine in1993–2020 and the practice of the EU Member–States is considered. It is noted theproblem of UM trolling and exceeding the number of applications in Ukraine for UM in comparison with inventions. It is associated with the expansion in 2003 of the UM object in addition to the device also to a process, substance, microorganism strain, plant or animal cells culture and limiting the criterion of patentability only to the requirementnovelty and industrial applicability.It is concluded that the adoption of the Law of 21.07.2020 № 816-IX is an important step to limit patent trolling. The Law provides for exclusion from the protection of the substance and the introduction of post grant opposition in the Appellate Chamber.However the Law does not solve the problem of patent trolling at the customs border and did not exclude process from the protection. Also there will still be the problem at the courts as well Appellate Chamber to declare a utility model invalid if the UM is a new but obvious technical solution due to the lack of inventive step requirement or lower requirements for inventive step.The peculiarities of the protection of the utility model in the 15 old EU member states and the United Kingdom are analyzed. It is shown the tendency to increase level of protection of UM in the EU. In 6 EU countries there is no UM protection. In 5 there is an inventive step requirement. In 2 countries protection is possible only for three-dimensional objects (Italy, Greece). In 2 countries (Finland, Spain) - lower requirements for the inventive step.The directions of change of UM legislation in Ukraine are substantiated, including: Option 1: cancellation of protection of UM taking into account experience of Luxembourg, Sweden, Great Britain, Belgium, the Netherlands.Option 2: introduction of protection only for three-dimensional UM (protection is not provided to the method, substances, biotechnological inventions). Establishment of the criterion of inventive step the same as for inventions. Determination of mandatory examination of compliancewith the criteria of patentability (novelty, inventive step, industrial applicability) before the enforcement of UM in the courts, customs, Antimonopoly Committee.Option 3. Definition of protection of utility model as a form of protection of the invention with similar requirements as in option 2.