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Thoughts on the Guidance examining patent applications relating to AI inventions

Updated: May 15, 2023

The Intellectual Property Office of the United Kingdom (IPO) has recently published the title ‘Examining patent applications relating to artificial intelligence (AI) inventions: The Guidance (hereafter, the Guidance) in order to demonstrate its practice regarding the examination of patent applications which are connected to AI developments.[1] In the Guidance, the IPO refers to the law regulating patent applications[2] and decisions made by UK Courts and relevant institutions.[3] The Guidance and any other guidance (that are also part of the Manual of Patent Practice[4]) also comment on the sufficiency of disclosure regarding AI supported inventions.[5]


Any guidance issued by IPO is helpful in shedding a light on the area of patent rights in the UK. The advantage is that by considering the information provided in such titles, inventors and applicants can have a more comprehensive perception of their inventions’ patentability, and they may be able to determine the requirements necessary to secure that they succeed in their applications. As a result, the criteria and requirements of patentability become clearly identifiable with the likelihood of failed patent applications being limited.



The examination of an invention splits up into different types, such as whether the AI performs a task or not, whether it technically contributes to the invention, or whether the invention is purely based on mathematical techniques or methods.[6] Depending on the answers to the questions that are uniquely asked for each and every AI invention, the IPO is able to predict whether the invention is patentable or not. For example, if the AI-related inventions are in a hardware version, then the IPO is more likely to give an affirmative answer. This is because hardware versions of AI-related inventions are typically more tangible and concrete, making it easier for the IPO to assess their patentability based on traditional patent criteria such as novelty, inventiveness, and industrial applicability.


The UK released certain precedents on the patentability of AI inventions which determined whether computer-implemented inventions make a technical contribution or not.[7] In Aerotel v Telco and Macrossan,[8] the UK Intellectual Property Office (IPO) held that the patents were invalid, on the grounds that they related to excluded subject matter namely, computer programs and business methods. Aerotel and Telco appealed the decision to the High Court, which referred the case to the Court of Appeal. The Court of Appeal held that the IPO had applied the wrong test in determining whether an invention was patentable. Instead of focusing on whether the invention related to an excluded subject matter, the court held that the key question was whether the invention made a technical contribution to the field of technology.[9]


For such determinations, technical contributions are assessed over whether they make the best version of its state of the art, which is highly questioned during the patent procedures.[10] Based on the results, this factor would prevent certain AI inventions from being excluded, and thus succeed in their patent application. In other words, whilst computer programmes are not eligible for patent protection, when an AI invention's task or process makes a technical contribution, a computer implemented invention avoids exclusion.[11] However, the sufficient disclosure of an AI invention is still the most important aspect of the processes because it ensures that the invention is adequately described and enabled for a person skilled in the art to understand and implement the invention without undue experimentation.


As per the relevant law, when applying for the grant of a patent, the invention shall be disclosed in a form that is enough to make a proficient person, from the same art as the invention, understand how the invention works.[12] Patent applications should include a clear demonstration of the working process of the invention regardless of whether it is a product or a process. The main aim of this disclosure requirement is to make the proficient person, from the same art with the invention, use his/her level of knowledge of the art and combine that knowledge with the adequate information that was supplied in the patent application to understand the logic of the invention.


The UK in stating its stance on the sufficient disclosure requirement of AI-related inventions claims that no other principles (that are not covered under the current relevant legislation) would specifically apply to these types of inventions. However, as you can imagine, the disclosure criterion requires applicants to submit the drawings and describe the working processes or procedures of the invention.


Although it may be possible for certain AI-related inventions to have enough disclosure, as each and every application will be examined based on its own merits, this requirement might turn out as problematic. For example, let us think of an AI invention which is computer-implemented that helps with translation activities. If AI technically contributes to the invention by itself, and if the creators/inventors are not able to sufficiently demonstrate its technique or process (because AI may create new processes or techniques that the inventor of it cannot understand), then this application will more likely be rejected by the IPO.[13] This is likely to happen as, in that case, any proficient person who is capable of understanding and applying such technologies regarding computer-based translation activities will not be able to apply or re-create the subject matter of the AI-related invention.


Being critical with these requirements does not help the market or in-sector developments; hence, proactiveness for solutions by states and their relevant patent offices must be sought through the law. The law must keep up with technological developments to serve its purpose within society and to protect the patent holders’ rights to ensure legal protection. If this principle is applied to the current case of sufficient disclosure requirements for AI-related inventions, it is suggested that the lawmakers should re-assess the situation to revisit the extent of this requirement. For example, if the physical demonstration of an AI related invention operation is not possible, then its operation system could be send to a proficient person, from the same state of art as that of the invention, for consideration and assessment. When inventors are in the position to ‘teach’ the operation system of their invention to a proficient person (without any demonstration), the patent application for such inventions may still be considered by the IPO.[14]


A graph demonstrating a sharp increase in AI-related patent applications from 1991 - 2019.
WIPO Technology Trends 2019: Artificial Intelligence, page 52.

Further, the Guidance for AI-related patent applications is a critical tool that can significantly impact the patent landscape by empowering applicants to understand the patentability requirements of their invention better. It enables inventors to draft patent applications more effectively, thereby increasing the consistency in examination processes globally. This consistency helps avoid disparate outcomes for similar AI inventions in different jurisdictions. Additionally, the Guidance can stimulate innovation in the AI industry by providing clear patentability pathways that incentivize inventors to invest more in AI research and development. Consequently, this can lead to an increase in the number of AI-related patents filed and impact the scope of patent protection granted, making it a potent force in shaping the future of AI innovation.


Although the IPO has developed its own approach based on its national laws and regulations governing the patentability of inventions, the fact that it has also considered guidance issued by European Patent Office (EUIPO) and the World Intellectual Property Organization (WIPO) was inevitable. EUIPO and WIPO have both issued guidance on various aspects of intellectual property law, that are relevant to the field of AI, including guidance on the patentability of AI inventions. For example, WIPO has published a set of policies that provide guidance on the examination of patent applications in the field of AI, as well as on other technical fields.


With respect to the examination of patent applications relating to AI inventions, the WIPO 'Technology Trends 2019 - Artificial Intelligence' was published as a policy that reveals the impact of AI on various aspects of intellectual property, including patentability, and provides examples of AI-related inventions that have been granted patents.[15] Following that, the WIPO 'Technology Trends 2021' was published so as to discuss the most recent developments in AI technology and how they may affect patentability and other forms of intellectual property.[16] In general, WIPO generates policies for the examination of patent applications in the field of AI that is intended to ensure the consistency and quality of the examination process, while also taking into account the unique characteristics of AI inventions and the need to balance the interest of inventors and the public. These regulations are designed to provide consistency in the examination of patent applications by national and regional patent offices around the world.


In light of the aforementioned, it may be said that technological developments can have profound effects on the economy and society. Inventors may be deterred from engaging in research and development if there is no legal framework that can support these innovations because they may worry that their intellectual property cannot be sufficiently safeguarded. This may stifle societal advancement, stunt economic growth, and inhibit innovation. Therefore, in order to satisfy society's needs and safeguard patent holders' rights, the release of the Guidance can be considered as a positive move.



Final thoughts


In a summary, given the growing significance of AI across various industries and its potential to revolutionise the way we live and work, the UK, alongside many other nations, is actively contemplating the patentability of AI-inventions. AI has proven to be a powerful tool for automating tasks, boosting productivity, and fostering innovation by enabling the development of new products and services. As AI technology continues to advance at an unprecedented pace, it is imperative to establish a robust legal framework that can effectively safeguard and foster the development of AI-inventions, thereby facilitating the emergence of cutting-edge AI-based solutions that can address the pressing challenges of our time. Therefore, it can be said that the UK supports the patentability of AI-related inventions. However, even these efforts may not be enough to cover the needs of the current level of technological development. The situation is not directly related to UK, IPO, or their perception; it is also related to the developments of AI and its easiness to be understood by non-technical persons. By understanding how AI works, and how AI-related inventions are created, inventors are more likely to benefit in securing the patentability as well as other relevant legal protections of their inventions, as their chances will be increased.




Endnotes

[1]Examining Patent Applications Relating to Artificial Intelligence (AI) Inventions: The Guidance’ (GOV.UK) accessed 10 October 2022. [2] Patent Act 1977. [3] As per the second paragraph of the Guidance, rulings handed down by UK courts are binding as well as decisions made by European Patent Office (EPO) Board of Appeal are strongly persuasive. [4] This set of documents were firstly published on 19 February 2016 and have been updated several times including 3 October 2022 - the last update, via ‘Manual of Patent Practice’ (GOV.UK) [5] The Guidance (n 1), s 83. [6] The Guidance (n 1), s 16-21. [7] Ibid. [8] Aerotel Ltd v Telco Holdings Ltd (2006) EWCA Civ 1371. [9] A new approach to patentability in the UK was created by the Aerotel v Telco and Macrossan case, which placed more emphasis on technical contributions than on the aesthetics of the invention. Since then, courts and patent offices all around the world have adopted the four-step test in large numbers. [10] Patents Act 1977, s 2(1) accessed 11 October 2022. [11]Guidance on Examining Patent Applications Relating to Artificial Intelligence Inventions in the UK’ (Mathys & Squire LLP, 26 September 2022) accessed 5 December 2022. [12] Patents Act 1977, s 14(3). [13] The Guidance (n 1), s 16-21. [14] The Guidance (n 1), s 16-21. [15]WIPO Technology Trends 2019- Artificial Intelligence’ accessed 15 December 2022. [16]WIPO Technology Trends 2021’ accessed 19 December 2022.

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