The UK Intellectual Property Office (UKIPO) has recently updated its guidelines for examining patent applications relating to artificial intelligence (AI) following the landmark court decision in Emotional Perception AI Ltd v Comptroller-General of Patents. This decision has significant implications for the patentability of AI inventions in the UK, particularly those involving artificial neural networks (ANNs). In this article, we explore the key takeaways from the Emotional Perception decision, the updates to the patent examination guidelines, and provide practical advice for those seeking to protect their AI innovations.
The Emotional Perception Decision
As we discussed in our previous article, the Emotional Perception decision has reshaped the landscape of AI patentability in the UK. To recap, the court held that inventions involving ANNs, whether implemented in hardware or software, are not considered computer programs "as such" and therefore are not excluded from patentability under the computer program exclusion.
The court's reasoning centred on the invention's use of an ANN to provide music recommendations based on the semantic similarity of songs, finding that this application provided a technical effect sufficient to avoid the computer program exclusion. For a more detailed analysis of the decision, please refer to our earlier article.
Updates to the Patent Examination Guidelines
In response to the Emotional Perception decision, the UKIPO has updated its guidelines for examining AI patent applications. Patent examiners are now instructed not to object to inventions involving ANNs under the computer program exclusion, as long as the claims are directed to an ANN itself, its training, or its use. However, other exclusions, such as mathematical methods and methods of doing business, may still apply to ANN inventions if appropriate, especially if the ANNs lack any practical application.
The updated guidelines clarify that if a claim merely refers to generic machine learning or training a model without specifics of an ANN, the computer program exclusion is still engaged, and the applicant would need to demonstrate a technical contribution to avoid the exclusion. The guidelines also affirm that certain example ANN cases previously considered excluded are now allowable (Scenarios 13-15).
Ambiguity in the Guidelines
While the updated guidelines provide clarity on the patentability of inventions involving ANNs, there is an ambiguity regarding the treatment of other AI/ML architectures. The guidelines specifically mention ANNs but do not explicitly address architectures like Transformers, Convolutional Neural Networks (CNNs), or Recurrent Neural Networks (RNNs).
It remains unclear whether these other architectures will receive the same treatment as ANNs or if they will still need to be evaluated under the "technical contribution" test to avoid exclusion as computer programs. This ambiguity may lead to uncertainty for inventors and businesses seeking to patent AI inventions that do not specifically use ANNs.
Practical Advice for AI Patent Applications
In light of the Emotional Perception decision and updated examination guidelines, here are some practical tips for drafting patent applications for AI inventions in the UK:
- focus claims on specific device architecture, e.g. ANNs: When drafting claims for AI inventions, focus on the specific implementation and use of one or more specific device architectures, such as ANNs, whenever possible, rather than generic machine learning. Provide details of the specific device architecture, training process, and practical application;
- highlight technical effects: Even though the computer program exclusion may not apply to specific device architectures, such as ANN inventions, be prepared to argue that the invention is more than an abstract mathematical model or business method by highlighting the technical effects and real-world uses of the specific device architectures;
- explain technical contributions: If the AI invention does not specifically use an ANN, the application should clearly explain the technical contribution and effects of the invention to avoid the computer program exclusion. For example, identify any new ways the invention makes a computer operate or improves its functionality;
- consider core AI inventions carefully: For core AI inventions (those related to the fundamental models, algorithms, or mathematical methods), focus on how they make a technical contribution. This could involve causing a functional unit of a computer to work in a new technical way or creating a new physical combination of hardware within the computer; and
- refer to updated examination scenarios: Use the updated examination scenarios as a guide when drafting claims and descriptions to align with the types of AI inventions the UKIPO now considers allowable.
Conclusion
The Emotional Perception decision and updated UKIPO examination guidelines provide clarity on new opportunities for protecting AI inventions in the UK, particularly those that utilise ANNs. However, the ambiguity surrounding the treatment of other AI/ML architectures may lead to uncertainty for inventors and businesses. Furthermore, careful claim drafting and description of the technical effects are still essential to avoid other exclusions. By understanding these changes and following best practices for drafting AI patent applications, inventors and businesses can better protect their AI innovations in the UK.