Fri 1st Dec 2023
Has patenting AI at the UK Patent Office just got easier?
The UK Intellectual Property Office (UKIPO) has issued a practice update regarding the examination of patent applications involving artificial neural networks (ANNs). Patent Attorney Thomas Mahon explains more.
When being examined at the UK patent office, patent applications for AI-related inventions have typically fallen foul of section 1(2)(c) of the UK Patents Act 1977, which excludes from patentability computer programs, as such.
Now, following the recent High Court judgement in Emotional Perception AI Ltd vs Comptroller-General of Patents, Designs and Trade Marks (2023), the UK IPO has issued a practice update that prevents an ANN being objected to as excluded subject matter on the grounds of being a “program for a computer”.
Patent Attorney Tom Woodhouse's previous note on The Emotional Perception judgement explains the case in detail. To summarise, Emotional Perception filed a UK patent application for an ANN trained to provide media file recommendations, such as music files, that are similar in terms of human perception and emotion. The application was initially rejected by the UK IPO on the grounds of being excluded from patentability as a computer program, as such. The High Court then overturned the decision under appeal, finding that an ANN, whether implemented in hardware or software, is not excluded from patentability under the computer program exclusion.
The UK IPO initially reacted by temporarily suspending its Guidelines on the examination of AI-related applications, seemingly realising that the Guidelines were not permissive enough in terms of patentability of AI-inventions in light of the High Court decision. Now, going even further, the UK IPO has stated that, effective immediately, ANNs will not be objected to under the exclusion of section 1(2)(c).
The practice update acknowledges that, in any event “moving data outside the computer system, in the form of a file that is transferred, provides an external (outside world) technical effect (see -). When coupled with the purpose and method of selecting the file’s contents, this fulfils the requirement for a technical effect which avoids the computer program exclusion (see ).” The purpose and method involve “training the ANN by considering both natural language descriptions of a music file as it might be perceived by a human (for example the metadata relating to the music file) and the physical properties of the music file (for example the tone, timbre, speed, and loudness).”
The temporary guidance omits any mentions of the Section1(2)(a) exclusion on “mathematical methods…as such”, which is the exclusion under which the European Patent Office currently assesses technical effect of machine learning inventions. Therefore, the full effect of Emotional Perception on UKIPO practice remains to be seen.
Nevertheless, the practice update is promising news for Applicants of AI-related inventions. Coupled with the relatively low cost of examination, AI-innovators should therefore seriously consider the UKIPO as a forum for protecting their inventions in the UK, in parallel with or as an alternative to the European Patent Office.
For more information on patents relating to AI and machine learning, please contact Thomas Mahon.
This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in December 2023.