25 March 2021

Following a consultation in late 2020 the UKIPO has published its summary of the responses and proposed actions. These include a further consultation on the need for legislation in relation to the possibility of AI-inventors and a study of the current approach of the UKIPO into AI as a form of computer implemented invention. Some respondents have proposed sui generis IP rights for AI; the UKIPO report neither expressly rules these out nor suggests that these are likely to be in serious contemplation.

AI generated inventions

Whether patents should be granted for inventions which are created by AI systems without the involvement of a human inventor gave rise to mixed views. The current UK legal position following the High Court decision in Thaler v Comptroller General (see our reports here and here) is that patents require a human inventor. Some respondents argued that this position potentially discourages the adoption of AI technology in the innovation process, or could have a detrimental effect on transparency, as applicants would be incentivised to name a human inventor even where the invention was actually devised by an AI. Others expressed concern that if AI inventorship is not permitted, AI generated inventions might not be published. This would, undermine one of the purposes of the patent system: encouraging technical innovation to be shared in exchange for a temporary monopoly over it. Some respondents expressed scepticism that current AI systems could devise inventions on their own and considered there to be no need to change the current position. Some respondents suggested that a legislative provision be introduced in similar terms to that used in copyright for computer-generated works, referring to an inventor as including “a person by whom the arrangements necessary for devising an invention are undertaken”. A sui generis right for AI was also suggested by some, while others expressed the opposite view.

The Government concluded that these issues require further consideration and intends to consult later this year on a range of possible policy options for protecting AI generated inventions which would otherwise not meet inventorship criteria. Legislative change was expressly recognised as a possibility. What the government’s response does not do is clearly identify a range of practical circumstances an AI generated invention would not meet current inventorship criteria beyond the obvious case, such as in Thaler, where an applicant disclaims any human involvement and names only an AI entity as inventor.

Patents for AI

Several questions in the call for views addressed the criteria for the grant of a patent for an invention which involved the use of AI, including inventive step, sufficiency and excluded subject matter. In relation to inventive step and sufficiency there was general agreement that the current law was fit for purpose. For inventive step, a large majority thought it unnecessary to develop any concept of a ‘skilled machine’ to supplement the ‘person skilled in the art’. For sufficiency, although a number of respondents asked whether a deposit system for training data sets or a specification of machine connection weightings was needed to avoid applicants having to include large volumes of information in their patent specifications to make them sufficient. Others reported that such voluminous data should not be needed and thus no consideration of a deposit system was necessary.

The biggest area of debate surrounded excluded subject matter, i.e. whether an invention is a “computer program as such”. Some expressed concern that the current approach reduced incentives for innovation by excluding certain AI inventions from protection. Others said the current balance was the right, in some cases referring to the use of confidentiality protection instead of patent protection. Some cited the UKIPO and EPO’s differing approaches to computer implemented inventions as causing practical burdens on applicants. There was disagreement between respondents as to whether this would require only a change of UKIPO practice or also a change in the law: the underlying law is the same but the EPO and English case law differ, although are intended to lead to the same overall result. A few respondents queried whether this issue should arise, since they took the view that ‘core AI’ inventions were intrinsically patentable as being more than a “computer program as such”. Some respondents here suggested a sui generis right might be better suited to AI, as a fast-moving field, than re-consideration of the scope of the computer implemented inventions exclusion.

As with AI created inventions, the Government concluded that further analysis of these issues is required before changing the law. The UKIPO therefore intends to review its guidelines on patent exclusion practices, in consultation with interested stakeholders, in particular to reduce any lack of harmony with outcomes in the EPO. The government also plans to commission an economic study to enhance its understanding of the role the IP framework plays in incentivising investment in AI, and to use this as an evidence base for judging any further intervention. It will also examine the feasibility, costs and benefits of a deposit system for training data.

Other IPRs

The consultation and response also considered other IP rights. For our full write-up, see here.

About the Authors

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Chris de Mauny
Partner
I am a patent litigation specialist in London. I advise clients from a range of industries including hi-tech, life sciences and sustainable technologies.

Direct: +44 (0)20 7415 6000

[email protected]
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Toby Bond
Associate
I'm a senior associate in Bird & Bird's Intellectual Property Group. Having studied physics at university, I'm fascinated by technology and the way in which it is reshaping our world.

Direct: +44 (0)20 7415 6000

[email protected]

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