IPO's Guidance on Patent Applications Relating to Artificial Intelligence Inventions

Diagram of the Turing test

Author Juan Alberto Sánchez Margallo Licence CC BY 2.5 Source Wikimedia Commons

 

Jane Lambert

Following the Court of Appeal's judgment in Comptroller General of Patents, Designs and Trade Marks v Emotional Perception AI Ltd [2024] EWCA Civ 825. [2024] Bus LR 1589, [2024] WLR(D) 339 on 19 July 2024 which I discussed in Patents - the Appeal in Comptroller v Emotional Perceptions on 26 Aug 2024, the UK Intellectual Property Office has published new Guidelines for examining patent applications relating to artificial intelligence (AI) and Scenarios applying the guidelines for examining patent applications for AI.

The Guidelines state that AI inventions as computer-implemented inventions. They explain that AI inventions rely on mathematical methods and computer programs in some way. The law excludes from patent protection inventions relating solely to a mathematical method or a program for a computer but when a task or process performed by an AI invention makes a technical contribution the invention is not excluded and is eligible for the grant of a patent.

The Guidelines continue that an AI invention makes a technical contribution if it:

• embodies or performs a technical process which exists outside a computer, or
• contributes to solving a technical problem lying outside a computer or lying within the computer itself, or
• is a new way of operating a computer in a technical sense.

However, an AI invention does not make a technical contribution if:

• it relates solely to items listed as being excluded (for example a business method) and there is no more to it, or
• it relates solely to processing or manipulating information or data and there is no more to it, or
• it is just a better or well-written program for a conventional computer and there is no more to it.

The statutory provision is s.1 (1) (d) of the Patents Act 1977:

"A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—
.................................

(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below; and references in this Act to a patentable invention shall be construed accordingly."

S.1 (2) provides:

"It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—

(a) a discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d) the presentation of information;

but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."

The Scenarios give examples of AI inventions that have proceeded to grant and others that have been excluded under s.1 (2).

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