10 May 2024

UKIPO new guidance on the patentability of AI inventions

With just a few days to go to the Court of Appeal hearing in the highly-anticipated appeal against the High Court decision in Emotional Perception (as we discussed here and here), the UK IPO has updated and republished its guidance on examining patent applications relating to artificial intelligence (AI) inventions.

Our understanding is that the Appeal against the Emotional Perception decision at the High Court in November last year remains ongoing. As such, it may be that the updated guidance has a limited shelf-life, and is relatively quickly superseded by further updates once the Court of Appeal provides its view.

That said, the new guidance is an insight into the UK IPO’s view of the significance of the High Court decision were it to be upheld. For example, according to the new guidance (and consistent with earlier statutory guidance from the UK IPO), patent examiners should not object to inventions involving artificial neural networks (ANNs) under the “program for a computer” exclusion. However, the new guidance is now explicit that other exclusions, such as the “mathematical method” or “method of doing business” exclusions, may nevertheless come into play.

The updated Scenarios appear to confirm the particular significance of the decision to “Core AI” inventions (that is, inventions which relate to the architecture or operation of the AI itself without being limited to any specific use case). In particular, Scenarios 13-15, termed as “Core AI” by the UK IPO, were previously marked as unallowable under the program for a computer exclusion but are now all indicated not to be subject to this exclusion. Notably, the UK IPO does not appear to consider that any other exclusions, such as the mathematical method exclusion, would apply in these circumstances.

While practitioners await the Court of Appeal’s assessment of Emotional Perception, the UK IPO’s updates draw into relief the issues at stake. However, further updates after the Court of Appeal gives its judgment may be on their way.