What is patentable when it comes to Artificial Intelligence?

This question is considered in part by the recent guidance published in September by the UK Intellectual Property Office (IPO) - Examining patent applications relating to artificial intelligence (AI) inventions

It is published in two parts:

1. The guidance which focuses on AI inventions in relation to the exclusions to patentability contained in the Patents Act 1977
2. Various scenarios which include a non-binding assessment of the described AI inventions in relation to the exclusions to patentability

Before we turn to the guidance, it’s interesting to pause and reflect on the current position on patents and artificial intelligence. Given that artificial intelligence and how it relates to patents is an area which is under close watch around the world, there are many big questions to be answered, such as the one posed by Lord Kitchin in 2019:

“More fundamentally, patent systems are intended to encourage and reward innovation. Inventors disclose their inventions to the world in return for a monopoly of a certain duration. Do the same considerations apply to inventions generated by AI? I am not sure that they do. Computers do not respond to rewards or incentives, although maybe one day they will.” (UKIPO - WIPO Conference (supremecourt.uk))

Artificial Intelligence and inventors

Much of the discussion to date has centred around whether or not an artificial intelligence system should be recognised as the inventor of a patentable invention, despite such a system or machine not being a living human.  

As we covered in a previous article on AI inventorship, in September 2021 the Court of Appeal determined that an AI system or machine couldn't be an inventor under the Patents Act 1977. The court’s decision was based on a simple point of legislative interpretation: that an inventor under the Patents Act must be a person. Whether or not you agree with it, the decision highlights the difficulties in how to accommodate advances in creative AI.

The UK isn't yet prepared to accept that an invention by robots, or an artificial intelligence system/machine is patentable. But in the UK we do accept that patents are generally available for AI inventions in all fields of technology.

The guidance

It should be emphasised that the guidance is nothing new. It does, however, provide us with a summary of the UK IPO’s position on the patentability of artificial intelligence, in so far as it relates to what is, or isn't, likely to be considered as excluded subject matter.

In summary, while the guidance does not consider the circumstances in which an AI invention might be considered “new” or as involving an “inventive step”, it does confirm (among other things):

• UK patent law excludes from patent protection inventions relating solely to a mathematical method “as such” and/or a program for a computer “as such”
• Broadly speaking, an AI invention is only excluded from patent protection if it does not reveal a technical character or serve a technical purpose
• An AI invention is likely to make a technical contribution if, when it runs on a computer, its instructions:
  • Embody a technical process which exists outside the computer 
  • Contribute to the solution of a technical problem lying outside the computer
  • Solve a technical problem lying within the computer itself
  • Define a new way of operating the computer in a technical sense

The guidance also separated potential AI inventions into two categories:

1. Applied AI inventions, which apply AI techniques to a field other than the field of AI
    
2. Core AI inventions define an advance in the field of AI itself (eg an improved AI model, algorithm, or mathematical method)

While both categories of AI are potentially patentable, the allowable subject matter is more likely to be found in the Applied AI category. 

What to be aware of if making patent applications for AI

The guidance is certainly a sign that the UK IPO is potentially a friendly place when it comes to considering patent applications concerning AI. However, it's also clear that the evaluation and assessment of the alleged technical contribution that the AI invention makes to the art is not always going to be straightforward. Often much of the analysis will focus on the specification of the patent as a whole. Therefore, it remains imperative to ensure that the invention is clearly described in the specification of the patent and that the technical contribution of the invention is clearly spelled out.

Examining patent applications relating to artificial intelligence (AI) inventions - GOV.UK (www.gov.uk)