Understanding AI-based inventions and how they can be patented

In the Spotlight this Month: Elizabeth O’Leary from Swindell & Pearson, a valued member of our Partner network, discusses AI-driven innovations – exploring their diverse categories and the feasibility of securing patents for such advancements.

AI has been on everyone’s minds lately – whether that’s through the popularity of services like ChatGPT or debates about the ethics of AI-produced art – and whether we like it or not, it looks like it’s going to continue its meteoric rise. The only question now is how to get on top in a world that’s looking increasingly like science fiction.

Many people’s first impression is that it’s not possible to patent AI inventions. However, in the UK the law prevents you from getting a patent for an invention that only relates to mathematical methods and/or computer programs. If you have an AI invention and you can persuade the UKIPO that the AI invention has a “technical contribution” beyond just being a mathematical method or computer program, then you’re in with a chance of getting a granted patent.

To consider whether an AI-based invention can be patented we therefore need to consider the technical effects it causes. The sort of effects that the UKIPO would consider to constitute a “technical contribution” would be:

• Embody a technical process that exists outside the computer; or
• Contribute to the solution of a technical problem lying outside the computer; or
• Solve a technical problem lying within the computer itself; or
• Define a new way of operating the computer in a technical sense.

Some example types of AI inventions for which patent applications have been allowed are set out below. Please note that this list is not exhaustive and other technical contributions could be envisaged.

Additionally, AI inventions are not excluded if they are claimed in a hardware only form, i.e., they do not rely on program instructions or a programmable device.

AI-based inventions can be split into two groups: core AI and applied AI. Core AI focuses on improving AI algorithms themselves, applied AI considers how AI can be applied to situations outside of the computer, such as:

• Vehicle plate recognition
• Fault monitoring in real-world systems; and
• Controlling real-world systems

Applied AI looks outside the computer and therefore it can be easier to demonstrate a technical contribution, and persuade the UKIPO to grant a patent, for applied AI than for core AI. However, there are still many circumstances in which a core AI invention would produce a “technical contribution”. For example, if a core AI patent application defines a new way of operating the computer in a technical sense, then it may be considered to produce a “technical contribution”.

And what if you’re using AI to invent? Recently, test cases around the world have asked if an AI can be listed as an inventor on a patent. In the UK and US, AI cannot be listed as inventor, but in other countries (for example South Africa), AI can be the inventor.

Lastly, it’s important to remember that, to obtain a granted patent, an invention must be novel, meaning it can’t be disclosed anywhere in the world before you file its patent application. AI poses a new risk to novelty of inventions, because feeding confidential information about an invention (AI-related or not) into a public chatbot such as ChatGPT could count as a public disclosure. It’s therefore wise to avoid providing any information about your invention to ChatGPT or other AI-driven chatbots.

If you’d like to apply for patent protection for your AI invention, or are just interested in further information about patenting AI inventions, get in touch with S&P’s team of experts via the email addresses below. Even if an AI invention isn’t protectable by patenting, it’s still possible to use a mixture of design right, copyright and trade secrets to take care of your intellectual property (IP) and we’re happy to help with initial investigations as well as dealing with the different types of IP right.

Get in touch with Christine Anglesea (christine.anglesea@patents.co.uk) or Elizabeth O’Leary (elizabeth.oleary@patents.co.uk), or visit Swindell & Pearson at www.patents.co.uk and their team of professionals will be happy to speak to you.

Written by Elizabeth O’Leary, Associate, Swindell & Pearson