Posted on 18/10/2022

Patenting AI inventions in the UK

The UK IPO has published guidance on examination of AI patent applications in two parts; The Guidance and The Scenarios.

In 2002, Rodney Brooks, a leader in the field of robotics and AI, who was Panasonic Professor of Robotics at the Massachusetts Institute of Technology and is a former director of the MIT Computer Science and Artificial Intelligence Laboratory, wrote a book called ‘ROBOT’ in which he said:

‘Today, there is a clear distinction in most people’s minds between the robots of science fiction and the machines in their daily lives.  We see C3PO, R2D2, Commander Data, and HAL in Star Wars, Star Trek, and 2001: A Space Odyssey.  But these are not rivalled in any way by the capabilities of our lawn mowers automobiles, or Windows 2000.  There are the machines of science fiction fantasy, and then there are the machines we live with. Two completely different worlds. Our fantasy machines have syntax and technology. They also have emotions, desires, fears, loves and pride.   Our real machines do not.  Or so it seems at the dawn of the third millennium.  But how will it look in a hundred years from now? My thesis is that in just twenty years, the boundary between fantasy and reality will be rent asunder.  Just five years from now that boundary will be breached in ways that are as unimaginable to most people today as daily use of the World Wide Web was ten years ago.’

Given that we are now 20 years on from when these statements were made, how close are we to the ‘boundary between fantasy and reality’ being ‘rent asunder’ as Rodney Brooks contended?

Hard on the heels of Court rulings in a number of jurisdictions around the world that decided that ‘AI cannot be an inventor of an invention’, the UK Intellectual Property Office (IPO) published its guidance on examination of patent applications relating to artificial intelligence (AI) inventions in two parts, a first part entitled ‘The Guidance’ and a second part, likely to be more useful to patent attorneys and those wishing to obtain patent protection for AI inventions, entitled ‘The Scenarios’.

Reading through the documents issued, there are a lot of definitions including ‘applied AI’ and ‘core AI’ but most importantly, the Guidance notes that ‘there is no single agreed-upon definition of artificial intelligence.

The government has defined AI as:

‘technologies with the ability to perform tasks that would otherwise require human intelligence, such as visual perception, speech recognition, and language translation.

The Guidance then goes on to state that ‘In the absence of a universally accepted definition of AI, it may be helpful to think about AI inventions in terms of the simplified conceptual model illustrated below.

The Executive Summary portion of the Guidance document distils the entirety of that document down to one simple premise and that is that ‘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’.

This is stated to apply whether the invention is categorised as “applied AI” or “core AI” or it relates to training an AI invention in some way.

The Guidance also states that an AI invention is likely to reveal a technical contribution if its instructions:

  • embody or perform a technical process which exists outside a computer; or
  • contribute to the solution of a technical problem lying outside the computer;

as may be the case when signposts (i) and/or (v) are relevant.

The ‘signposts’ referred to are the five signposts identified by the UK High Court in AT&T/Cvon, which read as follows:

i) whether the claimed technical effect has a technical effect on a process which is carried on outside the computer;

ii) whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run;

iii) whether the claimed technical effect results in the computer being made to operate in a new way;

iv) whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer;

v) whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented.

These signposts have been used by the UK IPO for more than ten years to determine whether an inventive concept of an invention provides a technical contribution. In effect therefore, the ‘new’ and much anticipated Guidance, is not much more than a summary of existing law and window dressing.

The Scenarios document however, is likely to be of much more use to those interested in what practical steps can be taken to not only identify when an AI invention provides a technical contribution but also how to focus a patent claim to highlight the technical contribution.

The Scenarios document is divided into scenarios in which a claimed invention is not excluded from patent protection and those in which the claimed invention is excluded, all of which is based on the analysis of the technical contribution as indicated by the AT&T/Cvon signposts.

So while the guidance might be new, the law which it is applying, is not.

However, the focus placed on the release of the new guidance indicates that the question needs to be asked: are we missing a larger issue here?

At its heart, the larger issue is one which the legislators and the courts have long struggled with and that is how they keep up with advances in technology.  It is extremely difficult to write laws and legal decisions with one eye on future developments especially given how quickly certain technologies are advancing.  As mentioned above, in 2002, the level of use of the ‘World Wide Web’ as it was then called, compared to ten years earlier was a paradigm shift and we could go further to say that the use of the internet now as compared to 2002 would be similarly astounding to someone looking at the timeline of its use (the official birthday of the internet is 1 January 1983).

No-one in1983 could have anticipated the complete reliance that we place on the internet, only 40 years later.

Similarly, it is very difficult to foresee how and in which fields technology will advance in the next ten years let alone the next 40 years.  Many futurists try to predict this, but they are invariably incorrect.

We are however, in the middle of technological advancement that is so profound and the nature of which changes our daily lives in so many subtle ways, that the legal system surrounding patenting of inventions such as AI inventions, should move with the times as much as possible.

After all, the UK Patents Act is from 1977, six years before the birth of the internet.  Do we need a more radical look at the basis of the patent law, rather than simply updated Guidance on the patenting of inventions which were not even in existence when the Patents Act was enacted?

If you have any questions about patenting AI inventions please get in touch to speak with one of our attorneys.

Wilson Gunn