04/10/2022
On 22 September 2022, the UK IPO published their long-awaited guidance on examination of AI-related patent applications (the full document can be found here). On the face of it the guidance note does not alter the threshold of patentability of AI inventions at the UK IPO, but rather gives some helpful insight as to where the threshold lies. As an accompaniment to the guidance note, the UK IPO have also provided some specific examples of AI inventions that will, or will not, be considered patentable.
One of the helpful contributions made by the guidelines is the division of AI-related inventions into two main categories: “Core AI” and “Applied AI”, and the provision of illustrative examples of each for both patentable and non patentable scenarios. A core AI invention is defined as an AI invention that “does not specify any application or use-case for its AI features, and instead relates to an advance in the field of AI itself”. An applied AI invention, on the other hand, is an invention that “applies AI techniques to a field other than the field of AI”.
Protecting an AI invention in itself can be challenging in the UK, due to the exclusion from patentability of computer programs “as such”. However, the UK case law on “technical effect” provides five “signposts” that might indicate an AI or computer program related invention is allowable. These are defined in AT&T/Cvon and later in HTC v Apple as follows:
i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;
ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;
iii) whether the claimed technical effect results in the computer being made to operate in a new way;
iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer;
v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.
It is already well-established that applied AI inventions are, in general, more likely to be patentable in the UK than core AI inventions, since by being applied to a process in the real world, they usually satisfy the first of the five signposts. However, the patentability of core AI inventions remains somewhat harder to grasp. In this regard, the new guidance helpfully sets out two scenarios in which the UKIPO considers a core AI invention may be patentable:
1. The invention defines a functional unit of a computer being made to work in a new way.
2. The invention defines a new physical combination of hardware within a computer, provided that it produces a technical effect within the computer that does not solely fall lie within excluded subject matter under section 1(2) UKPA 1977.
and provides a number of related illustrations. One example illustration of a “core AI” invention (described in scenario 16 of the guidelines) relates to a method of operating a neural network on a system with multiple processors, the method involving adjusting the clock frequency of each of the processors as required to ensure that each processor will finish processing a layer of the neural network at the same time. The identified contribution provided by the claimed method amounts to operating a computer in a new way (adjusting clock frequencies) to solve a technical problem (synchronising the neural network processing). The third “signpost” therefore indicates that this claimed method is not excluded from patentability in the UK.
The new guidance follows the consultation held by the UKIPO last year, during which the Office sought evidence and views on a range of options on how AI should be dealt with in the patent and copyright systems.
The moves by the EPO and the UKIPO to publish AI-focussed examination guidance in recent years have perhaps been motivated by the most recent meeting of the IP5 New Emerging Technologies and Artificial Intelligence (NET/AI) special task force, during which all five IP Offices acknowledged the need to provide more specific guidance on examination practices in this area. Increased cooperation between IP offices including the EPO and UKIPO will hopefully help both offices to quickly evolve and refine their approaches to deal with the boom in development of AI technology that we have witnessed over the last few years.
We will be following up with detailed analysis on the new UK IPO scenarios and AI patentability in due course.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
