Outline of Patent Applications for AI-related Inventions in China

On December 31, 2024, the National Intellectual Property Administration of China (CNIPA) released the “Guidelines for Patent Applications for AI-related Inventions (Trial)” (hereinafter referred to as the “Guidelines”), which aims to provide a comprehensive and in-depth interpretation of the patent examination policy in the field of AI under the framework of China’s current patent legal system, addressing the hot legal issues commonly concerned by innovation entities. Below is an introduction to the main content of the Guidelines.

I. Common Types of AI-Related Patent Applications

Four types are classified based on the different “roles” played by AI in invention-creations:

Type 1: Patent Applications Relating to AI Algorithms or Models per se;

Type 2: Patent Applications Relating to Functions or Field Applications based on AI Algorithms or Models;

Type 3: Patent Applications Relating to AI-assisted Inventions;

Type 4: Patent Applications Relating to AI-generated Inventions.

II. Hot Legal Issues Concerning AI-Related Patent Applications

1. Eligibility of Inventors

For patent applications of Types 1 and 2, an inventor is the person who has made creative contributions to the substantive features of the invention-creation.

For Type 3, a natural person who has made creative contributions to the substantive features of the invention-creation may be named as the inventor in the patent application.

For Type 4, under the current legal framework in China, the AI that generated the invention cannot be granted inventor status.

2. Judgment on Subject Matter of AI Applications

A judgment on the subject matter of AI applications typically involves applications of Type 1 and Type 2. The subject matter judgment consists of two steps. The first step involves determining whether the solution falls under “rules and methods for mental activities”.

If a claim passes the first step, whether the solution qualifies as a “technical solution” will be further examined in the second step, which requires that the claim should adopt technical means that utilize natural laws to solve a technical problem and thereby achieve technical effects in line with natural laws.

Several circumstances that constitute technical solutions are outlined below:

Circumstance A: What is processed by AI algorithms or models is data with precise technical meanings in technical fields;

Circumstance B: There is a specific technical correlation between the AI algorithms or models and the internal structures of computer systems;

Circumstance C: Intrinsic correlation that conforms to natural laws between big data of specific application fields is mined based on the AI algorithms.

To avoid or overcome the defect of not constituting a technical solution, applicants can refer to circumstances A-C mentioned above when drafting their application documents and elaborate in the original specification on the technical problem to be solved, the technical means adopted, and the technical effects achievable by the solution. Alternatively, when responding to examination opinions, applicants can amend the claims based on the original application documents and fully explain in the observations why the amended solution constitutes a technical solution.

3. Requirements for Sufficient Disclosure of Specifications

The specification should fully describe the parts that contribute to the prior art. For the technical means embodying the inventive concept of the patent, the specification should clearly and completely describe them, to the extent that a person skilled in the art can implement the invention. The specification should clearly and objectively state the beneficial effects of the application compared to the prior art. When necessary, corresponding evidence can be provided to prove the invention’s contribution.

In response to examination opinions regarding insufficient disclosure of a specification, when presenting arguments, it is necessary to elaborate on the reasons and basis for why a person skilled in the art is able to implement the relevant solution. It should be noted that the judgment of whether the disclosure of a specification is sufficient is based on the content recorded in the original specification and claims.

4. Judgment on Inventiveness of AI applications

The solutions of AI applications typically include many algorithmic features. In assessing inventiveness, algorithmic features and technical features that functionally support and interact with each other should be considered as a whole. “Functionally supporting and interacting with each other” means that algorithmic features and technical features are tightly integrated, jointly forming a technical means to solve a specific technical problem and achieve corresponding technical effects. After considering the technical solution as a whole, if the solution exhibits prominent substantive features and notable progress compared to the prior art, the claim is deemed inventive.

Circumstances where algorithmic features, considered as a whole along with technical features, contribute to the technical solution include the following:

1. a) Making AI algorithm features an integral part of the technical means;
2. b) There is a specific technical correlation between the AI algorithms/models and the internal structures of computer systems;
3. c) The AI algorithms or models and the technical features together constitute the technical means to enhance user experience.

When responding to such examination opinions, the applicants should clarify whether the algorithmic features as distinguishing features enable the solution to solve technical problems, whether these features are closely related to the technical problems the application aims to solve, and whether they functionally support or interact with the technical features. When making amendments to overcome the defects pointed out in the examination opinion, the applicants may consider incorporating into the claims technical features from the original application that are distinguishable from the closest prior art or algorithmic features that functionally support or interact with the technical features.

5. Ethical Issues in AI

For patent applications involving the application of AI algorithms or models in different fields, the applicants should pay attention to whether the application of the claimed solution involving algorithms or models in specific fields violates any relevant laws or social ethics, or harms public interests.