Journal of Intellectual Property (J Intellect Property; JIP)

KCI Indexed
OPEN ACCESS, PEER REVIEWED

pISSN 1975-5945
eISSN 2733-8487
Research Article

Boundary Between ‘Discovery’ and ‘Invention’ in the Age of AI: Functional Claims and Patent Protection for Correlations and Patterns

1Ph.D. Candidate, Seoul National University School of Law, Republic of Korea
2Attorney, Seoul Bar Association, Republic of Korea
3J.S.D. Candidate, University of California, Berkeley, School of Law, USA

Correspondence to So Yeon Kim (soyeon3995@gmail.com)

Volume 21, Number 3, Pages 421-450, September 2026.
Journal of Intellectual Property 2026;21(3):421-450. https://doi.org/10.34122/jip.2026.21.3.421
Received on July 31, 2026, Revised on August 22, 2026, Accepted on September 04, 2026, Published on September 30, 2026.
Copyright © 2026 Korea Institute of Intellectual Property.
This is an Open Access article distributed under the terms of the Creative Commons Attribution-NonCommercial-NoDerivatives (https://creativecommons.org/licenses/by-nc-nd/4.0/) which permits use, distribution and reproduction in any medium, provided that the article is properly cited, the use is non-commercial and no modifications or adaptations are made.

Abstract

Artificial intelligence (AI) is being increasingly used to design and predict antibody candidates and to identify novel correlations and patterns in biological data. This raises a fundamental patent-law question: which AI-generated or AI-discovered results constitute a sufficient technical contribution to justify patent protection? This article distinguishes two analytically distinct cases: whether functionally defined genus claims covering AI-predicted antibodies are commensurate with the technical contribution actually disclosed, and whether AI-discovered correlations or patterns qualify as inventions at all. The former concerns claim scope, and the latter subject matter. The first case is examined through the enablement (Amgen, Wands) and written description (Ariad, Baxalta) requirements of §112(a), and compared with Korean case law under Article 42(3) and 42(4) of the Korean Patent Act. Korean law keeps the two requirements analytically separate, whereas the §112(f) means-plus-function approach in the U.S. has no counterpart in Korean law. The second case is analyzed through §101 and the Alice-Mayo framework, drawing implications for Article 2(1), which defines an invention as a creation of a technical idea utilizing a law of nature. The article argues that AI changes the factual premises to which established patent doctrines apply rather than the doctrines themselves. For functional claims, what matters is the ratio of verified to prophetic examples, the representativeness of the disclosed candidates, and whether the experimentation left to a skilled artisan is confirmation or new search. For claims on correlations or patterns, whether the claim stops at understanding the relationship or applies it through concrete technical means. Both questions return to two conventional boundaries of patent law: correspondence between disclosed technical contribution and patent scope, and the distinction between discovery and invention.
Keywords

artificial intelligence, functional claims, genus claims, enablement, written description, patent eligibility, patentable subject matter, antibody patents

Notes

Conflicts of Interest

No potential conflict of interest relevant to this article was reported.

Funding

The author received manuscript fees for this article from Korea Institute of Intellectual Property.

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