Decisions regarding AI and patentability

The end of 2023 saw two important, yet slightly conflicting, decisions being made in relation to Artificial Intelligence (‘AI’) in the UK High and Supreme Courts:

Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023]

On 21 November 2023, the UK High Court issued a decision which concluded that AI inventions or artificial neural network (‘ANN’) should no longer be objected to on the basis that they are  a “computer program” which are notably excluded from patentability under current UK law.

Since issuing the decision, the Intellectual Property Office’s (‘IPO’) guidelines for examining patent applications relating to AI inventions have been temporarily suspended, as of 23 November 2023.

The decision to allow the AI which meet certain criteria, which have a technical effect, to be patented makes the UK a world-leader in this area and as a result, an enticing destination for the future development of AI and its related industries.

More information on this decision can be found here.

Thaler v Comptroller-General of Patents, Designs and Trade Marks [2023]

On 20 December 2023, the UK Supreme Court issued a decision which concluded that inventors must still be a “persons” under the Patents Act 1977 and that, as a result, the AI system ‘DABUS’ could not be considered an inventor.

However, the decision emphasised that although the decision is consistent with the current laws on inventorship and entitlement, this is partly due to the fact that the Patents Act 1977 was enacted before the issue of AI inventorship existed. As a result, this possibility had not been properly contemplated by the current legislation.

What’s next?

These decisions suggest a need for an update to the UK Patents Act 1977, which is one of the oldest legislations relating to intellectual property still in force without any significant amendments.

The Registered Designs Act 1949, the Trade Marks Act 1994 and the Copyright Act 1989 were all subject to significant amendment in compliance with the development of EU legislation prior to Brexit. The notable lack of any significant amendment to the Patents Act 1977 was perhaps due to an absence of a unitary patent law in the EU at that same time.

However, in light of these recent decisions, perhaps it is now time to amend the Patents Act 1977 to allow the patenting of AI inventions inventors and align with recent developments in technology.

After all, the purpose of the Patents Act is to encourage innovation; by granting protection in law in the form of a patent, in return innovative knowledge is publicly disclosed which can, in turn, inspire and encourage further advancements and subsequent inventions.

If the current Patents Act is unable to fulfil its purpose of encouraging and rewarding innovation in light to recent technological developments relating to AI, then revision and amendment of it certainly seems warranted.

In the meantime, while the current legislation is still in force, inventors – both AI and natural persons – will need to continue to find new ways around the Patents Act 1977 in order to secure the right to patent their inventions.