Loss of CRISPR Priority in Europe is a Warning to All Patent Applicants

On 17 January 2018, a panel of the European Patent Office (EPO) opposition division wholly revoked a patent co-owned by the Broad Institute (‘Broad’) relating to CRISPR/Cas9 ‘gene editing’ technology.  The European patent in question, number EP2771468, is entitled ‘Engineering of systems, methods and optimized guide compositions for sequence manipulation’, and is a European equivalent to US patent no. 8,906,616, which is one of the key Broad patents involved in the US patent interference dispute with the University of California (UC) – which is currently on appeal to the US Court of Appeals for the Federal Circuit.  As is usual with European opposition proceedings, the ruling was issued immediately at the hearing (which had originally been scheduled to continue for two further days).  A full written decision providing detailed reasons is likely to be a few weeks away.

Technically, the basis for revocation in the final decision is likely to be lack of novelty and/or inventive step of all claims of the Broad patent.  However, the underlying reason for Broad’s failure to defend its patent is a loss of priority.  In particular, the EPO panel determined that Broad was not entitled to claim priority from four of its earlier US provisional applications, including the earliest filing, US provisional application no. 61/736,527, which was filed on 12 December 2012.  This loss of priority was fatal to the patent, as a result of a number of publications – including Broad’s own – that occurred subsequently, but prior to the full application’s filing date of 12 December 2013.

While this decision is obviously pivotal in the ongoing disputes between Broad and UC over ownership of foundational patent rights relating to CRISPR/Cas9 technology, it also provides an object lesson and a timely reminder of essential requirements for valid priority claims for patent applicants around the world, in all fields of technology.  While the circumstances of Broad’s case are somewhat more complex than most patent filings, what has happened to it here is not at all specific to the particular invention at issue.  In a nutshell, the problem was that, at the time of filing international application no. PCT/US2013/074819 (from which the European patent is derived), the named applicants – Broad, MIT and Harvard – did not collectively own all of the rights necessary to claim priority from the earlier provisional applications.  More particularly, the provisional applications named a researcher from Rockefeller University as a co-inventor/applicant, yet neither the researcher nor Rockefeller was named as an applicant on the international application.  Nor had the named applicants received any assignment from Rockefeller of the right to claim priority in the international application.

In fairness to Broad, the US national law relating to ‘internal’ priority (i.e. claiming the benefit of a US provisional application in a subsequent non-provisional application) is less strict, and focusses on the substance of the invention actually claimed in the later application rather than on a distinct right of priority.  But this can hardly be an excuse for ignorance of the international position, especially when the stakes are so high.  Broad has issued a statement, arguing that the EPO decision is based on a technicality, and asserting that it is ‘inconsistent with treaties designed to harmonize the international patent process, including that of the United States and Europe’.  I disagree.  Not only is this not the first time that the EPO has applied these rules in relation to priority claims, but it is not the only adjudicating body to have determined that they are, in fact, required by the international treaties in question.

Broad has vowed to appeal.  In the meantime – and in anticipation of the likelihood that any appeal will fail – all international applicants would be well-advised to ensure that they are clear on the ownership of the right to priority at the time of filing.  At the end of this article, I set out some guidelines for avoiding the troubles that Broad has encountered, not only at the EPO but at any international patent office.

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Tags: CRISPR, Europe, International treaties, Paris Convention, Patent Cooperation Treaty, Priority claim

The Impact of Machine Learning on Patent Law, Part 2: ‘Machine-Assisted Inventing’

In my previous article, I argued that existing (and foreseeable) artificial intelligence (AI) or machine learning (ML) systems do not exhibit creativity or inventiveness, and are incapable of anything that could reasonably be described as ‘invention’.  I acknowledged, however, that some such systems have generated results that may qualify as patentable inventions.  I therefore concluded with a question: if computers cannot invent, and yet the outcome of running a computer program can be an invention, then who – if anyone – is the inventor?

In addressing this question, it is important to understand that ML systems do not autonomously or independently generate novel outputs.  In my view, this is a fundamental error of understanding in Professor Ryan Abbott’s paper ‘I Think, Therefore I Invent: Creative Computers and the Future of Patent Law’, Boston College Law Review, Vol. 57, No. 4, 2016 (also available at SSRN), which I discussed in the first article of this series.  Abbott contends, in particular, that ‘machines have been autonomously generating patentable results for at least twenty years and that the pace of such invention is likely increasing.’ 

This, I have argued, is simply wrong.  The difference between a computer that is programmed to play the board game Go, and one that is programmed to learn to play Go is, of course, significant.  The former can only make moves that are determined in accordance with its explicit programming, whereas the latter may appear to ‘invent’ new strategies in response to patterns occurring in its training data that have not previously been recognised by human players.  But the appearance of invention is not the same thing as actual invention.  The ML player is still doing nothing more than following the instructions devised by its programmers.  The Google DeepMind AlphaGo system has become the world’s best Go player as a result of years of development, trial, experiment, and experience on the part of its designers.  AlphaGo plays as well as it does simply, and only, because that is what it was designed to do.  In this sense it is no more ‘autonomous’ than any other computer program.

In this second article I will explain why I believe that in the case of all existing (and currently foreseeable) ML systems which may generate inventions as output, there is always a human inventor.  This is consistent with the history and current state of patent law, as well as with the practical and technical reality of ML systems.

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Tags: Artificial intelligence, Innovation, Inventorship, Machine learning, Patent law

The Impact of Machine Learning on Patent Law, Part 1: Can a Computer ‘Invent’?

As a product of millions of years of evolution, the human brain is a remarkable organ.  Recent research indicates that a typical brain comprises somewhere in the vicinity of 80 to 100 billion neurons, and a roughly equal number of non-neuronal cells.  This mass of biological matter is capable of astonishing feats – many of them simultaneously – from enabling us, consciously and unconsciously, to control the behaviour and movement of our bodies, to sensing, comprehending and interacting with the environment around us, to communicating with one another using a variety of languages and symbols, to creating, composing and inventing brand new works of science, technology, and art.  In performing all of these tasks, the brain consumes just 20 watts of power.  By way of comparison, microprocessors at the high end of Intel’s latest Core i7 range consume up to 140 watts.

One relatively recent product of the amazing human brain is the range of technologies often collectively called ‘artificial intelligence’ (AI).  That is the last time I will use this particular phrase without irony in this series of articles – in my view, it is too vague a term, and tends to create an impression that computers are somehow approaching the capacity to operate on-par with human intelligence, which is simply not true.  Nonetheless, such luminaries as Stephen Hawking and Elon Musk have piped up over the past year or so with their concerns that our machines may soon rise up and render us obsolete or, worse still, destroy us!

In a similar vein, there are some people in the field of intellectual property who are starting to ask questions about whether computers can be ‘creative’ or ‘inventive’ and, if so, whether it should be possible for a computer to be named as an inventor on a patent application – or, conversely, whether some humans should be disentitled from inventorship on the basis that their computers, rather than themselves, were the true inventors.  One academic who has been making a name for himself in this emerging field of study is Professor of Law and Health Sciences at the University of Surrey, Ryan Abbott.  Professor Abbott is the author of, among other works on the topic, ‘I Think, Therefore I Invent: Creative Computers and the Future of Patent Law’, Boston College Law Review, Vol. 57, No. 4, 2016 (also available at SSRN), in which he argues that the law should embrace treating non-humans as inventors because this ‘would incentivize the creation of intellectual property by encouraging the development of creative computers.’

As I shall explain, however, I do not agree with Professor Abbott that computers can, or should, be regarded as inventors for the purpose of granting patents.  Furthermore, while Abbott accepts claims that patents have already been granted on what he calls ‘computational inventions’, I firmly believe that a computer is yet to ‘invent’ anything.  In my view, the researchers and technologists who claim otherwise have an interest in promoting a particular perspective, and in doing so they are subtly extending the definitions of ‘creation’ and ‘invention’ to encompass the contribution of their machines, to the detriment of the human operators who are responsible for providing the true creative input in the process.

I am further concerned that, should this view of ‘machine as (co)inventor’ prevail, it will in fact be to the detriment of the patent system.  I think it highly unlikely that lawmakers – whether they be legislators or common-law judges – will embrace the idea of granting patents on machine inventions.  On the contrary, it seems far more probable that if the notion takes hold that computers are actually doing the ‘inventing’ in many cases, it will simply become even more difficult for humans to secure patent protection for computer-implemented, or computer-assisted, inventions.

This is a complex topic that I intend to cover in a series of three articles.  In this first part, I will introduce the field of machine learning, give some examples, and then attempt to dispel some of the hype that has developed around this technology – including in Abbott’s work.  My aim here is primarily to refute the argument that existing machines are capable of engaging in ‘creative’ or ‘inventive’ activity.  In part 2, I will delve into the role of machine learning in assisting with the generation of new inventions.  Finally, I will look at how to go about identifying the (human) inventors in such cases.

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Tags: Artificial intelligence, DABUS, Innovation, Inventorship, Machine learning, Patent law

A Profile of Australian and New Zealand Patent Attorneys

As of 24 February 2017, Australian and New Zealand patent attorneys (collectively ‘Trans-Tasman Patent Attorneys’) have been subject to a single joint regulatory and disciplinary regime administered by the Trans-Tasman IP Attorneys Board (‘the Board’).  Among other things, the Board is responsible for maintaining a register of patent attorneys, a searchable version of which is available on its website.  The register records details of each attorney including, in most cases, a contact address and the name of any attorney firm or company that employs or is operated by the attorney.  This information provides an opportunity to ‘profile’ the trans-Tasman patent attorney profession.

While there may be no such thing as an ‘average’ patent attorney, an analysis of the register permits a few statistical observations to be made.  For example, if you were to pick a trans-Tasman patent attorney at random, there is nearly a two-thirds probability that they are also registered as a trade marks attorney, around 80% chance that they work as an attorney in private practice, a 95% chance that they live in either Australia or New Zealand, just under 25% probability that they work for a firm with 24 or more other patent attorneys, and about a 30% probability that they are employed by a firm within one of Australia’s publicly-listed ownership groups.  There is also around 70% chance (if that is the right word) that they are a man.

There is one registered patent attorney in Australia for every 32,000 population, which compares to one for every 7,000 people in the United States.  You would think, therefore, that If the demand for patent attorney services in Australia matched that of the US then Australia’s attorneys would be drowning in work, and the profession would be experiencing explosive growth!  Of course that is not the case.  On the contrary, the Australian and New Zealand patent attorney professions have been undergoing significant structural changes in response to market challenges.  The numbers bear out just how substantial these changes have been in relation to the size of the trans-Tasman profession.

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Tags: Australia, New Zealand, Patent attorney profession