UKIPO changes its patenting guidelines for AI inventions
In our report of the recent High Court decision (Emotional Perception) that found an invention directed to an Artificial Neural Network (ANN) was patentable because the statutory exclusion for non-patentable subject matter concerning "computer program as such" did not apply, we commented that it would remain to be seen how the decision is applied in practice by the UK Intellectual Property Office (IPO). Two recent announcements from the IPO have shed some light on the issue, but questions remain and the announcements are perhaps not quite as positive for patentees as some have interpreted.
What has the IPO said?
In a swift response to the judgment, the IPO has issued statutory guidance on the examination of patent applications involving ANNs. The IPO has also temporarily suspended its more general guidelines on examining patent applications relating to AI inventions pending consideration of the judgment.
Much of the statutory guidance is dedicated to summarising the invention and judgment. The section that relates specifically to the IPO's practice is brief, but contains the pithy statement that "patent examiners should not object to inventions involving ANNs under the "program for a computer" exclusion".
So what's the problem?
The IPO has said it will not raise the computer program as such exclusion against inventions involving ANNs but that is of course only one objection that the IPO can raise. Another exclusion that is often cited against certain types of computer-implemented inventions is the 'mathematical method as such' exclusion – that is, an invention is not patentable if it relates to a mathematical method as such.
Because of procedural arguments raised by the patentee during the trial, the judge did not consider whether the invention in Emotional Perception was a mathematical method as such. It is therefore possible that patentability objections for ANN inventions might pivot from being raised by the IPO under the computer program exclusion to being raised under the mathematical method exclusion instead.
What will the IPO do?
It's not possible to say at the moment whether, and to what extent, the IPO will issue objections that would previously have been under the computer program exclusion under the mathematical method exclusion instead. However, it should be noted that in some ways this is similar to the way the patentability of AI inventions is assessed at the European Patent Office (EPO). The EPO take the view that, generally speaking, AI and machine learning are based on computational models and algorithms that are of an abstract mathematical nature. AI inventions are often assessed in the context of mathematical method exclusions. The challenge applicants face at the EPO is to show that claim features which, in isolation, relate to a mathematical method (such as ANNs), nevertheless contribute to the technical character of the invention as a whole and so are included in the assessment of inventive step.
Whether the mathematical method exclusion is something that applicants will face with increasing frequency before the IPO remains to be seen. We're looking forward to reviewing the revised general guidelines on examining AI inventions once reissued and hopefully this is the start of the UK leading the way in being a more patent friendly jurisdiction for AI innovations.
To discuss any of the points raised in this article, please contact Arnie Francis or Alex Brodie.
Footnotes
[] Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch) (21 November 2023).