UKIPO issues guidance on patent applications relating to AI inventions

The guidance set outs the practice within the UK Intellectual Property Office when examining patent applications for inventions relating to artificial intelligence.

The UKIPO has issued guidance about patent applications relating to AI inventions. The government has summaries AI as being "technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation". The guidance says that in the UK, patents are available for AI inventions in all fields of technology. The guidance contains examples and is summarised as follows:

- AI inventions are typically computer-implemented and may rely on mathematical methods and computer programs in some way. 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". However, these exclusions are applied as a matter of "substance not form" by considering the task or process an AI invention performs when it runs.

- When the task or process performed by an AI invention reveals a technical contribution to the known art, the AI invention is not excluded and is patent-eligible.-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; or
  • contribute to the solution of a technical problem lying outside the computer; or
  • solve a technical problem lying within the computer itself; or
  • define a new way of operating the computer in a technical sense;
  • as may happen when one or more of the five "signposts" (see HTC Europe Co Ltd v Apple Inc [2013] RPC 30) point to allowability.

- AI inventions are not excluded if they are claimed in hardware-only form, that is, if they do not rely on program instructions or a programmable device for their implementation.
- An AI invention is only excluded from patent protection if it does not reveal a technical contribution. An AI invention is unlikely to make a technical contribution if its task or process:
  • relates solely to items listed as being excluded (for example, a business method) and there is no more to it; or
  • relates solely to processing or manipulating information or data and there is no more to it; or
  • has the effect of just being a better or well-written program for a conventional computer and there is no more to it.

- The conditions set out above apply whether the invention is categorised as "applied AI" or "core AI" or it relates to training an AI invention in some way.
- Patent protection is available for training datasets when the are used in inventions which reveal a technical contribution. However, claims to datasets characterised solely by the information content of the dataset are likely excluded as presentation of information as such.
- The sufficiency of disclosure of an AI invention or dataset is assessed, like any other invention, according to the principles set out in Eli Lilly v Human Genome Sciences [2008] RPC2. It is often tricky deciding how much detail to include in a patent application regarding the architecture of machine learning models and about the use of training data.

Published: 2022-09-23T15:10:00

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