Patenting AI Inventions in the UK and Europe

Artificial Intelligence (AI) has been frequently mentioned in the news, from catching law-breaking drivers to winning photography competitions. Whilst AI-based technologies have an essential role in advancing the boundaries of innovation, several challenges arise for innovators seeking to protect their AI-based work.

In particular, both the European Patent Convention 2000 and the UK Patents Act 1977 include exclusions in respect of subject matter relating to mathematical methods and programs for computers' as such'. Given the emphasis on computational models and algorithms in AI-based technologies, the route to patent protection requires careful navigation.

Fortunately, the European Patent Office (EPO) and the UK Intellectual Property Office (UK IPO) have acknowledged the increasing importance of AI-based inventions and sought to provide applicants with improved guidance relating to patentability issues in this domain.

Europe

The European approach to assessing the patentability of AI and machine learning innovations is provided in the EPO's Guidelines for Examination, Part G, Chapter II, 3.3.1. There, it is explained how computational models and algorithms are per se of an abstract mathematical nature. Consequently, the EPO applies the same well-established tests for assessing potential inventions with a mathematical component to AI-based inventions. In such cases, the assessment of the inventive step is based on all features which contribute to the technical character of the invention. Therefore, when it can be shown that any mathematical methods contribute to an invention's technical character, they may help pursue a positive assessment of the inventive step. In this regard, the technical character of an AI-based invention might be emphasised by specifying the technical application or technical implementation when claiming the invention.

UK

The UK IPO set out its enhanced guidance in September 2022, reiterating the importance of the well-established Aerotel test and the AT&T/HTC signposts in determining the technical contributions of AI-based inventions. Helpfully, they also provided several examples showing both scenarios likely to reveal a technical contribution and scenarios unlikely to reveal a technical contribution. Following the issuance of the enhanced guidance, it is clear, at least from several Hearing Officer Decisions (BL O/0706/23, BL O/0705/23, BL O/0007/23), that the scenarios are routinely being referred to as part of the consideration of excluded subject matter in relation to AI-based inventions in the UK.

Whilst the EPO Guidelines and the UK IPO enhanced guidance provide applicants with an excellent starting point in understanding the likelihood of patent protection being achievable for their AI-based innovations, each case must be considered on an individual basis.

We would be happy to discuss your particular situation and guide you through the issues of obtaining patent protection for your AI-based inventions. Please contact your usual attorney or e-mail us at mail@stratagemipm.co.uk.