Until late last year, the law relating to the patentability of AI-innovations at the UK Intellectual Property Office (UK IPO) had been relatively settled for some time. However, in November 2023, Sir Anthony Mann’s High Court judgement in the Emotional Perception AI case threw a spanner into the works.
As reported in our previous bulletin, in the Emotional Perception decision, Sir Anthony Mann found that the UK IPO had erred in refusing to grant a patent application for a suggestion engine providing recommendations for music, images, or the like. In particular, Sir Anthony Mann concluded that artificial neural networks (ANNs), regardless of their implementation means, go beyond a mere ‘program for a computer as such’ and therefore should not be excluded from patentability on that basis.
Shortly afterwards, the UK IPO suspended their AI Guidelines, seemingly for no longer being permissive enough for AI-innovations.
This was a welcome development for many patentees since, at the time, in some cases, significant time and energy could be expended convincing an examiner that an AI-innovation was more than a mere program for a computer and had a further technical effect.
The law in this area is still in flux, because the UK IPO have appealed the Emotional Perception decision, and that appeal is still pending.
However, in the most recent development in the saga, the UK IPO have now re-issued their AI Guidelines.
In these Guidelines, the UK IPO perhaps unsurprisingly state that “patent examiners should not object to inventions involving ANNs under the “program for a computer” exclusion”. However, the Guidelines also go further, specifying that “to qualify as an invention involving an ANN, the invention must either claim an ANN itself or include claim limitations to training or using an ANN. Otherwise, the Emotional Perception judgment will not apply […] If a claimed invention is not directed to an ANN, its training, or its use, then the computer program exclusion must be considered. For example, if a claim merely refers to machine learning or training a model, then it engages the computer program exclusion.”.
Moreover, the amended Guidelines set out that while the ‘program for a computer’ exclusion will not apply, in some cases, examiners may still object to ANN-innovations using the related ‘abstract mathematical method’ and ‘method of doing business’ exclusions. Here, the UK IPO have included additional examples of applications refused as mere ‘methods of doing business’, suggesting that this assessment may become more of a key consideration for examiners in such cases.
In addition, the UK IPO have also taken the opportunity to make further updates throughout the Guidelines, which perhaps suggest how they intend to apply the law in practice. In doing so, the UK IPO seem to hint at a move towards EPO practice. In particular, the Guidelines refer to rejecting applications which do not ‘solve a technical problem’ and contrast examples of unpatentable ‘methods of doing business’ with an example of patentable training data generation for image classifiers. The EPO have also issued a decision finding training data generation for image classifiers to be patentable and, in general, image processing is considered a ‘technical’ endeavour at the EPO.
That is, it appears for the time being that the UK IPO intend to apply to Emotional Perception decision narrowly. Nonetheless, an additional line of argument is now available for patentees, which may help smooth the route to grant. Thus, it may be prudent to consider a direct UK application (possibly co-pending with a European application) in the filing strategy for ANN-innovations.
Of course, with the appeal pending, and a hearing expected in a matter of weeks, this is going to be far from the last word on the topic.
