New UK AI patent guidance issued ahead of appeal hearing

Patent attorney Harry Muttock of Pinsent Masons said the updated guidelines will continue to be “useful to patent applicants, practitioners and examiners alike, not just for AI applications but for computer-implemented inventions of all kinds”, and that it also “draws attention to the fact-specific nature of determining whether or not subject matter falls within an exclusion to patentability”.

UK patents can only be granted for inventions that satisfy four core conditions set out under the Patents Act 1977: the invention must be new; it must involve an ‘inventive step’; it must be capable of industrial application; and it must not be excluded subject matter – in essence, a type of invention that the Act states is not eligible for patent protection. Inventions that are computer programs are an example of excluded subject matter.

The scope of the computer programs exclusion and its application to a form of AI called ‘artificial neural networks’ (ANNs) was considered by the High Court in a case it ruled on last year.

An ANN was described by the High Court as being “a black box which is capable of being trained as how to process an input, learning by that training process, holding that learning within itself and then processing that input in a way derived from that training and learning”.

Emotional Perception AI Ltd (EPAI) developed a system that it claims makes music and other media recommendations to users in an improved way, based on how the users have been categorised by trained ANNs. Two ANNs operate within EPAI’s system. However, its patent application was rejected by a hearing officer at the IPO who determined that their claimed invention was not patentable. Dr Phil Thorpe considered that the EPAI system as a whole was a computer program and that its provision of “semantically similar file recommendations” was “not technical in nature”, meaning he considered it was excluded from patentability under the Patents Act.

However, EPAI was successful in challenging that decision before the High Court.

The judge, Sir Anthony Mann, found that what EPAI claimed under the patent application was not a computer program at all. In case he was wrong on that point, he went on to consider the extent to which the EPAI system was patentable even to the extent it constituted a computer program.

In this respect, the judge said Dr Thorpe had been wrong to evaluate the patentability of EPAI’s system as a whole. The judge said it was instead appropriate to “decouple” the part of the system used to implement the trained ANN and the part of the system used to train the ANN. He went on to consider that the part of EPAI’s system that achieves, or initiates, the training provided a ‘technical contribution’ – a concept established in UK case law pertaining to the patentability of computer-implemented inventions. That case law provides that a computer-implemented invention is lifted out of the exclusion on patentability that applies to computer programs if it makes a “technical contribution” to the state of the art.

The IPO has raised an appeal against the High Court’s ruling. The appeal is due to be heard on Tuesday 14 May.

The outcome of the appeal will influence the extent to which the UK is viewed by AI developers as a friendly jurisdiction for patenting AI inventions, Muttock said. He said that while the IPO’s new guidelines are subject to change depending on what the Court of Appeal rules, the latest update reflects the “AI-friendly” ruling of the High Court. He highlighted that the guidelines now contain a specific section covering ANNs to help patent examiners assess whether ANNs developed by others will meet the criteria for patentability clarified by the High Court in the EPAI case.

Despite this, there are some lingering questions over how AI-related inventions should be assessed for patentability in the UK, according to Muttock.

“Still hanging, in my view, is the substantive question of whether the UK should stick strictly to the statute in addressing excluded subject matter in isolation of the relevant art or whether it should adopt something more akin to the approach favoured by the European Patent Office,” Muttock said. “In applying the so-called COMVIK approach, the EPO looks at whether all features of an invention – technical or non-technical – contribute to produce a technical effect serving a technical purpose. This assessment informs its consideration of whether claimed computer-implemented inventions can be said to have taken an inventive step – a core requirement for patentability.”

“So far, the UK case law seems to me to be a little split, but certainly we can see that without some reflection on the application of the invention there can be little said about its technical nature,” he said.