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Artificial intelligence and patents: Government response to call for views

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markus-spiske-iar-afB0QQw-unsplashArtificial Intelligence (AI) continues to play an increasing role in technological development. There are many questions relating to intellectual property (IP) that arise from AI-related innovation. The UK government has indicated that it wants the UK to be at the forefront of the AI revolution, and wants to create the best environment to allow AI innovation to thrive.

Last year, the UK government published a call for views on various topics related to AI and IP. The government has now published its response, and below we summarise the response on the patent-related topics included in the call for views.

The patents-related topics of the call for views covered four broad themes: the aims of the patent system; AI as an inventor; the conditions for granting a patent; and, patent infringement.

On the aims of the patent system theme, the call for views asked what role the patent system does or should play in encouraging the development of AI technologies. The majority of respondents felt that the patent system had a positive influence on innovation, including in the field of AI. Many respondents felt that the patent system already encourages work in the AI field. Some respondents noted that different modes of AI innovation exist – e.g. ‘core AI’, AI applied to another technical field, AI-generated innovation – and that some of these modes are less suited to protection via the patent system than others.

In response, the government acknowledged that the views of those that responded mainly support an effective and balanced patent system as a means of incentivising development of AI in the UK.

On the AI as an inventor theme, the respondents fell broadly into two camps: those that felt that it was not possible for an AI system to devise an invention without human involvement; and, those that felt that it was, or at least might be in the near future. There were also a range of views on whether AI-generated innovation should be eligible for patent protection. Of those in favour, a concern was expressed that not recognising AI systems as inventors under the patent system could lead to inventions going unpublished.

In response, the government acknowledged that the current approach to inventorship criteria potentially has a detrimental impact on innovation, including transparency in the innovation process. In particular, the government reaffirms its wish that inventorship criteria should not present a barrier to protecting investment in AI-generated innovation. To this end, the government has committed to consult later this year on a range of possible policy options, including legislative change, for protecting AI-generated inventions that would otherwise not meet inventorship criteria.

It will be interesting to see exactly what types of AI-generated invention the government considers do not meet existing inventorship criteria. As the government noted, there was near complete agreement in the responses that AI systems are not independent agents seeking patent rights without human intervention. As such, even if it is felt that AI systems can devise an invention without human involvement, it at least seems arguable that issues of inventorship in such cases could be dealt with using existing provisions by looking at whoever put the conditions in place for the AI system to invent.

On the conditions for granting a patent theme, respondents generally agreed that the impact of patent exclusions on obtaining a patent on AI-based inventions depended on the particular type of AI innovation. There was general agreement that exclusions to patentability in legislation make it difficult to protect ‘core AI’ inventions, and some respondents felt that a patent limited to the specific technical application of core AI innovation is not a satisfactory solution to the problem. Many felt that there is less incentive to innovate in this area without access to patent rights. A key issue that was raised was the apparent greater uncertainty in UK Intellectual Property Office (UKIPO) decisions related to patent exclusions compared with the European Patent Office (EPO). This could cause greater business uncertainty, which could discourage investment. It was felt that the EPO has a more permissive to patent exclusions for AI patent applications.

In response, the government agreed on the importance for AI inventors that UK patent exclusion practice offers more clarity to improve predictability for patent application outcomes. To this end, the government has committed to publish enhanced IPO guidelines on patent exclusion practice for AI inventions and engage AI interested sectors, including SMEs, and the patent attorney profession to enhance understanding of UK patent exclusion practice and AI inventions. In particular, the UKIPO will review its patent practice in preparation for the guidelines and establish any difference in outcome for AI patent applications filed at the UKIPO and EPO.

The government therefore appears to acknowledge the desire and need for greater harmonisation between the UKIPO and EPO in relation to examination of excluded subject matter. Although the different tests applied by the UKIPO and EPO are supposed to result in the same outcomes for Applicants, it is generally felt that the UKIPO’s tests are stricter in this regard. Although completely abandoning the UKIPO’s current tests in favour of the EPO’s approach may seem unlikely, the direction of travel does seem to indicate a movement of UKIPO practice closer to EPO practice.

Still on the conditions for granting a patent theme, in response to assertions by respondents that a more difficult environment for obtaining patent protection for AI-based innovation reduces investment incentives, the government has committed to commission an economic study to enhance our understanding of the role the AI framework plays in incentivising investment in AI.

It will be interesting to see to what extent any firm conclusions can be drawn on the relative importance that current IP legislation plays in incentivising investment in relevant technologies. There are, of course, other beneficial factors – such as disclosure of innovation into the public domain – to be considered when judging whether there is rationale for further intervention in current legislation. Nonetheless, additional studies into this area are welcome.

On the patent infringement theme, most respondents agree legal persons should be liable when an AI system infringes a patent, and not the AI itself. It was frequently mentioned that the ‘black box’ nature of AI could make it difficult to prove infringement or prove the territory in which infringement took place.

In response, the government noted that issues regarding proving infringement already exist for other technologies, e.g. other computer-implemented inventions. The government is of the view that the courts already have appropriate flexibility to deal with issues in this area and, as such, the government does not intend to intervene in this area.

It is encouraging to see the UK government taking a proactive approach to potential issues relating to developing technologies, and we look forward to further updates in relation to the commitments made here by the government.

Colin Paterson 12 April 2021

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