Dr James-Robert Cram, Principal in our ChemLife team, delves into a thought-provoking topic for innovators: disclosing the use of artificial intelligence (AI) in the generation of new inventions when applying for an Australian patent.
The adage holds that there’s three people you always tell everything: your lawyer, your doctor, and your patent attorney. Therefore yes, you need to tell your patent attorney if you used AI to generate your invention.
Other than that – it depends.
A patent gives you the right for 20 years to exclude others from using your invention. The right is granted to you by the government. What the government requires in return is that you tell it and its public how to use your invention. The theory is that by telling everyone, everyone can come up with follow-on inventions of their own, which they then patent, and in doing so tell everyone all about, and so on and so on, and society advances through continuous innovation.
This “disclosure requirement” comes from section 40(2)(a) and (aa) of the Australian Patents Act which says that to get a patent in Australia you must:
“(a) disclose the invention in a manner which is clear enough and complete enough for the invention to be performed by a person skilled in the relevant art; and
(aa) disclose the best method known to the applicant of performing the invention”.
This is why it depends: the disclosure requirement is in relation to performing the invention. Meaning: if the AI used is necessary to, or the best way of, working your invention, then yes, you need to tell everyone about it by putting that information into the patent specification. This might be if your invention is the AI, or if it can only be made or operated using the AI, or the use of AI is the most efficient way of putting your invention into practice.
Otherwise, there is no requirement to tell (leaving aside situations where AI is the sole inventor). This might be if AI was used just in the discovery or design of your invention but there is no dependence on the AI in getting it to work or work best.
But of course, even if you are outside of the disclosure requirement you are still free to tell anyone and everyone about your use of AI if you choose – whether in the patent specification or by other medium.
It seems that many are choosing not to, as specific examples of AI-designed products are difficult to find (and verify) even though AI is being used everywhere (this is likely at least partly because there is uncertainty around the ability to patent when AI is an inventor – see our article). However, the pharmaceutical sector is being the least shy.
Here are a few examples:
- Insilico Medicine has patented its AI drug discovery tool (US11,403,521 – in-principle applicable to Australia) and in the patent told everyone all about the AI. It has also separately sought patent protection for drug molecules discovered using the AI (US11,530,197, AU2022225035). There is no mention of the use of AI in the drug patent but in other publications[1].
- Nimmune Biopharma has patented its drug omilancor for treatment of inflammatory bowel disease (AU2015337091). The drug was developed using NIMML Institute’s TITAN-X AI platform[2] . The patent acknowledges the use of AI through discussion of predictive binding to the biological target LANCL2.
- Evotec and Exscientia have patented their AI-designed lead tumor drug EXS21546 (AU2019282098). There is no mention of the use of AI in the patent but rather in other online materials[3].
Still not sure if you should tell?
That’s OK – you will have told your patent attorney. Your patent attorney will help you make the right call.
*Full disclosure: AI was used (just a little) in the preparation of this piece (!)
As one of Australia’s largest specialist intellectual property (IP) firms, Griffith Hack has significant experience advising clients in all aspects of IP.
If you have any further questions about this article or any other aspect of IP in Australia, please contact us.
[1] https://www.nature.com/articles/s41587-024-02143-0
[2] https://nimmunebio.com/nimmune-biopharma-acquires-development-and-commercialization-rights-nimmune-biopharma-acquires-development-and-commercialization-rights-to-omilancor-in-asian-markets/
[3] https://www.evotec.com/en/news/evotecs-partner-exscientia-receives-first-cta-approval-for-phase-iii-trial-of-exs-21546
