ANNd here we go: UK IPO releases its updated guidelines for examining patent applications relating to AI

Last week, the UK IPO released its updated guidelines for examining patent applications relating to AI. This hotly anticipated re-release follows a temporary period of suspension of the guidelines after the High Court’s decision in Emotional Perception AI Ltd v Comptroller General of Patents, where it was found that an AI invention relating to an artificial neural network (“ANN”) did not engage the exclusion from patentability for computer programs. 

The new guidelines consider the implications of that case, as well as a number of recent decisions of the Comptroller concerning AI inventions, and are a must read for those looking to obtain UK patent protection in this space.

Background

As some may know all too well, patenting an AI invention in the UK is not a simple affair. This is because the UK Patents Act contains several exclusions from patentability which, by their nature, often capture AI inventions. One such exclusion is the computer program exclusion, which may be thought to be inherently relevant to the world of AI. 

To try and dispel any misconceptions around the patentability of AI inventions, and to clarify how the exclusions from patentability apply to such inventions, in 2022 the UK IPO helpfully published a set of guidelines on how it would examine patent applications relating to AI inventions (see our earlier blog).

However, the position on the patentability of ANNs (a subset of machine learning) was significantly altered when, in November last year, the High Court handed down its decision in the Emotional Perception case. In that case, the High Court concluded that an ANN (in hardware or software form) relating to an improved system for providing media file recommendations to end users not only did not fall foul of the computer program exclusion, but didn’t even engage it (see our summary here). That was at odds with some of the statements included in the UK IPO’s original guidelines, and ultimately led to the UK IPO: (i) temporarily suspending its original guidelines; and (ii) telling UK patent examiners not to object to applications for inventions involving an ANN under the computer program exclusion. 

Since then, we’ve been patiently waiting for the UK IPO to consider the implications of the Emotional Perception case and release an updated version of its guidelines and related scenarios, which finally happened last week. 

Summary of changes to UK IPO guidelines

Those already familiar with the 2022 guidelines will be glad to hear that there haven’t been too many changes. The broad structure and categorisation into “Applied AI” and “Core AI” inventions remains the same, with the main changes being to reflect the decision in the Emotional Perception case. 

Those changes emphasise that ANNs (whether in hardware or software form) are not computer programs and therefore, logically, inventions involving an ANN do not engage the computer program exclusion. Patent examiners are therefore directed not to object to any invention involving ANNs under the exclusion for computer programs; the UK IPO defines an invention involving an ANN as “an invention which claims an ANN itself or that includes claim limitations to training or using an ANN”. Outside of those categories, however, the decision in Emotional Perception will not apply and the computer program exclusion will be considered. 

That said, this does not necessarily mean that all inventions claiming an ANN will be patentable, as one of the other statutory exclusions might apply (e.g. for mathematical methods or methods of doing business). Careful consideration will still be required for ANN inventions.

In addition to tackling the Emotional Perception judgment, a handful of other updates have also been made to reflect recent UK IPO decisions. These include: 

• decisions concerning other types of AI inventions (such as those relating to image processing); and 
• examples of applied AI inventions that have been refused under the business method exclusion.

Whilst these don’t have as big an impact on the patentability of AI as the Emotional Perception case, they are still helpful examples of how the UK IPO is applying the current rules. 

Changes to UK IPO scenarios

In parallel to the updates to the guidelines, the UK IPO’s illustrative scenarios relating to ANN’s (scenarios 13 – 15) have also been updated. As might be expected given the updates to the guidelines, the analysis and conclusion for each of these scenarios has been amended to state that the ANN inventions in question do not engage the computer program exclusion.

Comment

These updated guidelines and scenarios reinforce the Emotional Perception decision and offer reassurance to AI developers that patent applications for ANN inventions won’t face objections from the UK IPO based on the computer program exclusion. However, there are still limitations surrounding the patentability of AI inventions. For example:

• the changes to the interpretation of the computer program exclusion are limited to ANN inventions (and not machine learning in general); and
• even for ANN inventions, it is only the computer program exclusion that is avoided – a patent application for such an invention could still be refused under one of the other exclusions noted above.

Perhaps most importantly, the UK IPO has appealed the Emotional Perception decision, with the Court of Appeal hearing having taken place just a few days ago, on 14 May. If that appeal is successful, it could significantly alter the position again and lead to the UK IPO having to amend the guidelines for a second time. 

As a result, whilst the latest guidelines add some helpful clarifications, this area remains complex and is subject to change. Those looking to patent inventions in this space will do well to keep a close eye on the outcome of the Emotional Perception appeal.