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Updates on AI and patenting in the UK

By Frances Wilding, Partner and Greg Ward, Partner

Emotional Perception AI: An update on patenting AI in the UK

Earlier this month we reported that the landscape for patenting AI in the UK appeared to be changing, with a new positive decision (Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch)) issued by the UK High Court.

Previously, it had been very difficult to prosecute a patent application for an AI application to grant at the UK IPO, because these applications are likely to be rejected under the “program for a computer” exclusion. The UK IPO was regarded as a more challenging jurisdiction for these applications than even the European Patent Office (EPO). In the new positive decision, the UK High Court stated essentially that an Artificial Neural Network or ANN is not itself a program for a computer and therefore would fall outside the “program for a computer” exclusion from patentability. Within a week of the decision, the UK IPO released associated statutory guidance explicitly stating that “the office is making an immediate change to practice for the examination of ANNs for excluded subject matter. Patent Examiners should not object to inventions involving an ANN under the “program for a computer” exclusion of section 1(2)(c).”

Now, and somewhat unexpectedly after the new statutory guidance, the UK IPO has announced that it has requested and been granted leave to appeal the Emotional Perception AI decision to the Court of Appeal. This means that this decision might be reversed, so that the UK again becomes an unfavourable jurisdiction for ANN inventions, or the decision might be confirmed or clarified. In the meantime, a statement from the UK IPO indicates that the statutory guidance remains in force and that the UK IPO will continue to accept and examine patent applications related to AI. A UK IPO Examiner has confirmed to us that they will be applying the new positive decision and statutory guidance to examination of these cases until further notice.

Top UK Court rules AI can’t be patent inventor – Dabus

On 20 December 2023, the UK’s Supreme Court, which is the top court in the UK, ruled that an artificial intelligence cannot be the sole named inventor on a patent under the UK’s Patent legislation, in Thaler v Comptroller General [2023] UKSC 49. This judgement confirms that current British law, in particular the Patents Act 1977, requires a “natural person” rather than a machine to be behind an invention for a patent to be granted.

The case was an appeal on patentability of two patent applications for inventions made autonomously by Dr Stephan Thaler’s DABUS AI. The judgement sets out that the issue in question was not whether innovations created autonomously by AI should be patentable, but whether these patent applications listing DABUS AI as the sole inventor were admissible. As expected, the final appeal at the top UK court says that they were not.

This appeal is one of many worldwide patent applications and subsequent court cases filed by Dr Thaler to test the issue of whether AI can be listed as an inventor on a patent application. So far, the cases have been unsuccessful worldwide, with the exception of South Africa and an initial favourable decision in Australia, which was then overturned.

This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact or your usual HLK advisor.

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