Patentability and PHOSITA in the AI Era—A Japanese Perspective

Abstract 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.