UKIPO updates patent examination guidance after High Court AI patentability decision
Published on 11th Dec 2023
Examiners should not object to inventions involving artificial neural networks under the computer program exclusion
The High Court in a recent decision, Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks, found that a system for providing media-file recommendations to end users based on an artificial neural network (ANN) that had been trained in a distinct manner was capable of being patented. Sir Anthony Mann held not only that the invention did not fall within the computer program patentability exclusion but also that it did not constitute a computer program at all.
The judge had acknowledged that this was the first time that the computer program patentability exclusion had been considered in the context of artificial intelligence (AI) and, as a result, the UK Intellectual Property Office (UKIPO) had temporarily suspended its examination guidelines on patent applications relating to AI.
After considering the judgment, the UKIPO has produced new guidance on the examination of patent applications involving ANNs. It states that examiners should not object to inventions involving ANNs under the computer program patentability exclusion. This new guidance is effective immediately.
The UKIPO's Manual of Patent Practice and its guidelines for patent applications relating to AI inventions will both be updated in due course in light of the High Court's decision.
Osborne Clarke comment
This immediate change to the patent examination practices at the UKIPO is beneficial for AI developers, meaning that inventions involving ANNs should not be objected to on the basis of the computer program patentability exclusion.
However, it remains possible that such inventions could still be objected to on the basis of other patentability exclusions. For example, it could be argued that the ANN, or its training method, should be excluded as a mathematical method. This had been raised as an issue in Emotional Perception but was not considered by the judge due to a procedural objection.
Equally, it does not detract from the need to show that any claimed invention is novel and inventive. That said, the speed with which the UKIPO has reacted demonstrates the importance of these issues, and we strongly suspect that we will see more patents based on ANNs being granted by the UKIPO in the near future.
