A changing landscape for AI patenting in the UK

The most notable judicial developments have arisen in the High Court’s assessment of the applicability of the “programs for a computer” exclusion in Emotional Perception AI Ltd v UKIPO , and the appellants submissions in Thaler v Comptroller General of Patents Trade Marks and Designs, which attempted to widen the interpretation of inventorship under the Patents Act 1977 (the “Act”). The judicial reasonings in these judgements have further developed the current understanding of the regulatory position in the UK, whilst also shedding light on the policy considerations which the UK IPO will consider going forward.

The landscape at the end of 2022

The UK IPO’s initial guidance had aimed to categorise AI inventions as either Applied or Core inventions, to better assist patent examiners in their analysis of whether a specified invention could overcome the excluded subject matter objections under s1(2) of the Act. The guidance had suggested that it would be easier for Applied AI inventions, namely advances concerned with a technical field other than AI, to be granted patentability as the claimed invention would be better able to demonstrate a tangible real-world effect or “technical contribution”. Core inventions on the other hand, inventions limited to advances in the field of AI itself, would struggle for patent eligibility where there was no link to the advance claimed and a real-world process or an improvement in specific hardware.

The requirement for a “technical contribution” no longer?

The High Court’s decision in Emotional Perception, whilst according with the UK IPO guidance in finding that the invention did facilitate a “technical contribution”, also served to further distinguish what the UK IPO would deem as Core AI advances from a ‘computer program’.

Before evaluating the existence of a “technical contribution”, the Court first held that the training and operation of an artificial neural network (ANN) was distinct from a computer program and should not be assessed as an invention facilitating an improvement in a computer program. Consequently, the Aerotel requirement of a “technical contribution” should not be applied in the context of advances to the deep learning capabilities of AI models such as ANNs, despite the initial UK IPO guidance which had suggested that the s1(2) exclusion could act as a bar to patentability for inventions facilitating internal improvements to AI models.

Following the High Court’s judgement, the UK IPO withdrew their initial guidance and, in the interim, adopted a policy preventing patent examiners from objecting to inventions advancing the training of an ANN under the “program for a computer” exclusion. The High Court’s judgement and updated UK IPO guidance can be seen as a real time development to the current statutory regime, restricting the application of the “program for a computer” exclusion so as to be more permissive rather than obstructionist when assessing inventions which facilitate advances in the internal workings of AI models.

Redefining inventorship and UK IPO policy

The UK Supreme Court (the “UKSC”) in Thaler declined the appellant’s submissions to widen the interpretation of “inventor” under the Act, and instead affirmed that a “natural person” must still be designated as an inventor for the purposes of applications relating to AI output.

The UKSC’s acknowledgement that had the appellant, Dr Thaler, designated himself as the inventor on the application the outcome would likely have been different, demonstrates that whilst the Court was not hostile to the patentability of AI inventions, it was unwilling to redefine a central tenet of the current regime to facilitate the grant of a patent on the facts.

The policy considerations which informed the judgement in Thaler trace back to the UK IPO’s own deliberation on whether the meaning of inventorship under the Act should be expanded, which was considered during the initial consultation preceding the published guidance. Following consultation, the predominant thought in the UK IPO was that the judicial reinterpretation of the Act, whilst useful as an interim measure, should not be the predominant method for regulating AI patentability in the long term.

The UK IPO advocates that the legislative change to successfully regulate and incentivise AI patentability should arise from Government reform and strong international consultation, in order to develop a globally harmonised approach which ensures equal market incentive for inventors seeking patent eligibility for AI inventions across multiple jurisdictions. This policy consideration was reflected in the UKSC’s judgement which referenced the opinion of Court of Appeal Justice Elizabeth Laing:

“Whether or not thinking machines were capable of devising inventions in 1977, it is clear to me that Parliament did not have them in mind when enacting this scheme. If patents are to be granted in respect of inventions made by machines, the 1977 Act will have to be amended...”

Although in the short term the updated UK IPO guidance, in the wake of the decision in Emotional Perception, has provided a platform for AI innovators to overcome the “programs for a computer” exclusion, it is the UKSC’s decision in Thaler which hints at the UK IPO’s long-term strategy in regulating and examining the patentability of AI inventions.

Whilst the current UK regulatory position for AI might still be dictated by the Patents Act, it appears that going forward the UK IPO expects significant Executive reform in this area.

Read more in our global trade secrets and patents series:

• The Unified Patents Court: the first nine months - emerging trends
• Standard Essential Patents: key developments for SEPs and FRAND commitments
• Supplementary Protection Certificates (SPCs): recent developments in EU case law
• The limitation of patents in ongoing revocation procedures in Spain
• What’s plausible? The UK Court of Appeal revisits the ever shifting concept
• Navigating the New Frontier: AI Patentability at the European Patent Office
• Global trade secrets update