The UKIPO recently issued new guidance relating to examining patent applications relating to artificial intelligence. This new guidance is accompanied by a list of exemplary "Scenarios" which provide applied examples of the new guidance.
The new UKIPO guidance (see items 32-34) seems to suggest that the UKIPO will be taking a more positive approach in the assessment of AI inventions going forwards. In particular, the new guidance explicitly accepts that an “Applied AI” invention (an invention which applies an AI technique to a field other than AI) should be patentable if it:
- Carries out or controls a technical process which exists outside the computer; and/or
- Contributes to the solution of a technical problem lying outside the computer
Good news for applicants?
Although this new guidance is, on the face of it, simply applying the logic of existing UK case law, we think it is good news for applicants that the UKIPO is now explicitly acknowledging that “Applied AI” inventions are patent eligible, when in our experience such inventions have previously encountered difficulties at the UKIPO.
More good news is provided by the exemplary "Scenarios" which accompany the new guidance, and which demonstrate the sort of “Applied AI” inventions that the UKIPO should now find patent eligible. We think these “Scenarios” will be a useful toolkit for arguing the patentability of new “Applied AI” inventions, particularly when a new invention bears some degree of resemblance to one of the exemplified “Scenarios”.
In the past, we have found that UKIPO examiners can interpret the UK law on patent eligibility more strictly than the UK courts (see our Special Report). Our hope is that the new guidance and “Scenarios” will help UKIPO examiners take a more favourable position when examining “Applied AI” inventions in the future.
Core AI inventions
One disappointing aspect of the new guidance is that the UKIPO seem to indicate that they will continue to reject “Core AI” inventions (inventions which define an advance in the field of AI itself) as non-patentable, unless those inventions involve some defined interaction with computer hardware. This marks a clear difference from the EPO, which in practice appears to be prepared to allow patent applications relating to “Core AI inventions, even if the invention does not require a specific hardware interaction. From the explanations embedded in the new guidance, it seems the UKIPO feels bound by earlier UK legal precedent to reject such inventions. But in the long term, this marked difference in UKIPO, and EPO practice feels unsustainable, given that the UK law on patent eligibility is framed produce the same effect as the EPO approach[3]. For now, however, it seems as though “Core AI” inventions are likely to encounter more patent eligibility issues at the UKIPO than they would at the EPO.
Whilst we would like to see greater alignment between the UKIPO and EPO on “Core AI” inventions, overall, we see the new guidance as a positive step forward on the grounds that it provides an improved framework for protecting “Applied AI” inventions in the UK.
Conclusion
There is clearly plenty of detail to work through in relation to the new guidance, and we look forward to engaging with that detail over the coming weeks and months.
Read more about what the new guidance means regarding patent eligibility for AI inventions in the field of bioinformatics.
