Comparison of AI Eligible Subject Matters Between US and China

On Thursday 17 October 2019, the USPTO issued a Patent Eligible Guidance Update (2019 PEG). The update responded to the public comment received by the USPTO, requesting clarification on the new eligibility procedures. The 2019 PEG and its updates are beneficial to the AI applicants and demonstrate the developments of AI technologies. More and more AI inventors, owners and investors will be protected and be benefited from the new changes of the legal practice in US.

Nowadays a patent is not just a national-wide issue and is a global one now. China is a big market too which makes it important to investigate whether the strategies for an AI invention under the 2019 PEG are also applicable in China? Will the results be good or bad to an applicant if he uses such a strategy in China? Shall he make some modification to be adapted to the Chinese practice? How to make the adaption when dealing with the Chinese AI-related applications?

The 2019 PEG update clarified that a patent claim should not fall into one of the three categories of abstract ideas, i.e. mathematical concepts, certain methods of organizing human activity, and mental processes; however, the integration of a judicial exception into a practical application shall be patentable. The update clarified that claims should not be considered as reciting a mental process when they do not contain limitations that can practically be performed in the human mind.  For example, claims do not recite a mental process when the human mind is not equipped to perform the limitation, as in the case of a data encryption method or a method involving a manipulation of computer data structures. 

In China, the examiner generally will not challenge the issue of abstract ideas. Although the mathematical concepts, certain methods of organizing human activity, and mental processes are also non-patentable subject matters in China, an examiner would not use such reasons to reject a claim. He usually alleges that the invention of the claim is not a “technical” solution.

This difference between US and China is of the different manners of construing a claim. In US, during examination, a claim is construed before its objective is determined. However, in China, a claim is construed under its objective, and as such, some of the non-eligible subject matter will naturally be excluded during construction. For example, a medium includes a random-access memory, which is eligible, and carrier waves, which are non-eligible. In China, the carrier waves will not be construed into the protection of the claim because they do not comply with the objective of a patent. Similarly, the examples of the data encryption method or a method involving a manipulation of computer data structures listed in the 2019 PEG Update will also applicable in China. An applicant or patentee can also use this strategy to defend its patent in China.

The China examiner will consider the subject matter issue from a different point of view from a US examiner. The China examiner will put more focuses on the technical area of an AI-related invention and how to integrate an AI idea, whatever abstract or not, into a practical application.

For example, an invention used AI technology to manage bank accounts and transfers. The examiner deemed it was not “technical” and rejected it. The underlying reason of the rejection should be that it contained too many terms of bank account, deposit, transfer and so on, which made the examiner think of business method. On the contrary, a gambling system using AI technology was granted because the terms of “gambling” and “bet” in the application were translated into “game” or “game involving statistics and luckiness”.

When considering integration of an AI method into a practical application, the China examiner will consider the effects of the integration and how to improve the performance such as efficiency, speed, cost and so on. For example, in an automatic optimized control system using AI technology, the machine performance parameters were input into an AI network to adjust a set of control parameters, so that the machine performance parameters reached their optimal and stable value. As such, the machine would be operated in an optimal status. In another invention, the inventor added an extra input node of an Artificial Neural Network to improve the convergence speed of the network. Both of them were granted.

In summary, the examination attitude towards AI-related is relatively amicable in China. Because the method of construing a claim is favourable to the applicant, the abstract issue is generally not a big problem. However, the applicant shall consider the technical area by selecting terms and clarify the integration of an AI idea and a practical application and the effects thereof in the specification. The applicant may make some adaption through translation when entering its application into China.