Member Article

With the race to develop AIs, the intellectual property protection for them is an increasingly vexed subject. The UK Intellectual Property Office’s (UKIPO) new guidelines may help.

The issue

European and UK patent law excludes from patent protection inventions relating solely to a program for a computer or a mathematical method. The exception to this is where there is a ‘technical contribution’ to the state of the art. The meaning of ‘technical contribution’ has been much discussed but rarely settled, with decisions from the English Court of Appeal in Merrill Lynch, Gale’s Application, Aerotel/Macrossan, Symbian, HTC v Apple and Lantana.

A new AI is, by definition, a computer-implemented invention which may rely on computer programs or mathematical methods in some way. So, can a new AI be patented in the UK?

The solution?

In Emotional Perception AI Ltd v Comptroller-General of Patents, Designs, and Trade Marks [2023] EWHC 2948 (Ch), Mr Justice Mann gave a judgment on the patentability of an artificial neural network (ANN). Here, using an input media file (for example, a music file) the ANN was used to identify another media file which was semantically similar (think a similar emotional response). The Court concluded that the invention was patentable. 

The Court reasoned that the ANN may be implemented as a physical box with electronics in it or as a piece of software which enables a conventional computer to emulate the hardware. It concluded that, while both involve a computer, neither involves a computer program. Accordingly, the court held that the ANN therefore fell outside of the computer program exclusion.

Nonetheless, the court went on to consider if the claimed invention would involve a technical contribution. The court accepted an argument that moving data outside the computer system, in the form of a file that is transferred, provided an external technical effect. In particular, it reasoned:

"The correct view of what happened, for these purposes, is that a file has been identified, and then moved, because it fulfilled certain criteria. True it is that those criteria are not technical criteria in the sense that they can be described in purely technical terms, but they are criteria nonetheless, and the ANN has certainly gone about its analysis and selection in a technical way. It is not just any old file; it is a file identified as being semantically similar by the application of technical criteria which the system has worked out for itself. So the output is of a file that would not otherwise be selected. That seems to me to be a technical effect outside the computer for these purposes, and when coupled with the purpose and method of selection it fulfils the requirement of technical effect in order to escape the exclusion. I do not see why the possible subjective effect within a user's own non-artificial neural network should disqualify it for these purposes. To adapt the wording of Floyd J in Protecting Kids, the invention is not just one depending on the effect of the computerised process on the user. There is more than that. There is a produced file with (it is said) certain attributes. The file produced then goes on to have an effect on the user (if the thing works at all) but one cannot ignore the fact that a technical thing is actually produced. It would not matter if the user never listened to the file. The file, with its similarity characteristics, is still produced via the system which has set up the identification system and then implemented it." (Emphasis added.)

New UKIPO Guidelines

This is a potential relaxation in the law and appears to have run contrary to the guidelines offered by the UKIPO. While the decision is subject to an appeal, this has prompted the UKIPO to recently issue revised guidance on the patent ability of AI, which can be found here. 

These guidelines are summarised as follows.

• In the UK, patents are available for AI inventions in all fields of technology.
• AI inventions are computer-implemented inventions. They rely on mathematical methods and computer programs in some way. UK patent law excludes from patent protection inventions relating solely to a mathematical method or a program for a computer. However, the exclusions are applied as a matter of ‘substance not form’ by considering the task or process an AI invention performs.
• When the task or process performed by an AI invention makes a technical contribution to the known art, the invention is not excluded and is patent-eligible.
• An AI invention makes a technical contribution if:
  • it embodies or performs a technical process which exists outside a computer, or
  • it contributes to solving a technical problem lying outside a computer or lying within the computer itself, or
  • it is a new way of operating a computer in a technical sense.
• An AI invention is not excluded if it is claimed in hardware-only form. Hardware-only form means the claimed invention does not rely on a computer program or a programmable device in any way.
• An AI invention is only excluded from patent protection if it does not make a technical contribution. 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.
• However, following the judgment in Emotional Perception, an invention involving an artificial neural network (ANN) is not a computer program as such. The judgment in Emotional Perception is being appealed with the court of appeal. It is binding on the IPO until such time as the court determines otherwise.
• The conditions set out above apply to inventions that may be categorised as ‘applied AI’ or ‘core AI’. They also apply to the training of AI inventions.
• Patent protection is available for training data sets when they are used as part of an invention making a technical contribution. However, claims to data sets characterised solely by their information content are excluded as the presentation of information as such.
• The sufficiency of disclosure of an AI invention or a data set is assessed in the same way as any other invention. The relevant legal principles for assessing sufficiency are set out in Eli Lilly v Human Genome Sciences.

Some thoughts

We await the judgment from the English Court of Appeal. 

If the decision (and by extension the new guidelines) is upheld, this could indeed mark the beginning of a more AI-friendly era at the UK IPO. This may be in marked contrast to the European Patent Office, which on its current approach is unlikely to accept that there is a technical purpose in identifying semantically similar media files or that such files can be considered a technical object. Those developing AIs may, therefore, want to look to the UK when filing and enforcing patents for AIs.

A caveat, however: in Emotional Perception, the court did not consider whether an ANN was a mathematical method as such. While this did not matter because Mann J concluded there was a technical contribution, this remains a vulnerability in terms of the patentability of ANNs.

 

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