The story of Clearview AI’s patent application and how it weakened its privacy case in Australia

Article | December 30, 2021

The story of Clearview AI’s patent application and how it weakened its privacy case in Australia

The story of Clearview AI’s patent application and how it weakened its privacy case in Australia

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Introduction

In a recent privacy determination by the Office of the Australian Information Commissioner (OAIC) dated 14 October 2021, Commissioner Falk was satisfied that Clearview AI was required to comply with Australian privacy law and that the information it handled was personal information covered by Australia’s Privacy Act.

Recent research by Microsoft found that more than 40% of the global workforce are considering leaving their current employers this year. In addition, analysis by the Harvard Business Review indicates that employees aged between 30-45 years have experienced the greatest increase in resignation rates. Interestingly, industries with the highest resignation rates – notably technology and healthcare industries – are the same that experienced a surge in demand due to the pandemic.

So, what do high resignation rates have to do with intangible assets? Simple: intellectual capital.

Background

Clearview AI was founded in 2017 and developed a facial recognition app that is used by over 600 law enforcement agencies to to help solve shoplifting, identity theft, credit card fraud, murder and child sexual exploitation cases.

Clearview AI filed its US provisional patent application on 9 August 2019 directed to an invention for providing information about a subject that:

  1. received and transformed facial image data to facial recognition data;
  2. comparing the facial recognition data to reference facial recognition data; and
  3. identifying a candidate that matched the received facial image data and display personal information associated with the candidate retrieved from a database.

To shift focus away from the sensitive area of facial recognition for law enforcement reasons, in the case, Clearview AI submitted their patent application as evidence that their app had other uses, such as:

  • to learn more about a person the user has just met, such as through business, dating, or other relationship
  • to verify personal identification for the purpose of granting or denying access for a person, a facility, a venue, or a device
  • to accurately dispense social benefits and reduce fraud (by a public agency)

Interestingly, Commissioner Falk referred to ClearView AI’s patent application to make a different point about their app – that it demonstrates the capability of the technology to be used for other purposes including dating, retail, granting or denying access to a facility, venue, or device, accurately dispensing social benefits and reducing fraud.

Update on their US patent application (US20210042527)

On 8 Oct 2021, at the USPTO, Clearview AI filed a Request for Continued Examination (RCE) following an Examiner-Initiated Interview on 4 Oct 2021 where it was suggested that “comparing the facial recognition data (comprising a vector) is performed by a machine learning module, and wherein the machine learning module comprises a deep convolutional neural network (DCNN)” was an inventive feature over the prior art combination of US20160132720 [Klare], US20050280502 [Bell] and US9530047 [Tang].

It therefore appears likely that Clearview AI will be granted a US patent for their app for providing information about a person based on facial recognition.

Takeaways

[1] Care should be exercised when drafting a patent specification on the uses of an invention, especially in high risk areas that may intersect other areas of law such as privacy. This Clearview AI case demonstrates that what is stated in your own patent specification can be used against you. In Clearview AI’s case, this was 2 years later.

[2] There appears to be many opportunities remaining for patenting deep learning technology (e.g. CNNs) for various use cases.

 

Author

James Wan

Patent Attorney | Legal Counsel