The UKIPO issued another decision last month that sheds some light on how the UKIPO views inventions in the AI space. The invention concerned a method of training a neural network to output a risk score used in controlling access to a computer system. The invention is said to improve the explainability of the risk score by enforcing a monotonic relationship between each input and the output. The applicant argued that access control is a technical field, so the invention made a technical contribution and was not excluded from patentability. What did the UKIPO make of it?
With the UKIPOs current approach, the invention could indeed qualify as patentable subject matter if it made a contribution to a technical field. It was found that while a technical contribution may arise in the context of access control, the UKIPO found that in this case, the contribution resided within the administrative rules to allow access or not and was hence not technical. Nor was access control a technical field per se, and the claims included embodiments where the contribution was in the administrative / business area, namely controlling access to financial services, the only application example mentioned in the description. The application was therefore refused on the ground of excluded subject matter.
In another decision last month, somewhat related in that it considered what could be a technical contribution, the application was for a database storing biomedical information. However, the UKIPO held that despite the nature of the data being biomedical, the application still related to no more than a database and did not make it technical beyond being a ‘better program’:
“The application is simply a database which in response to an input provides an output. That is, I enter data into a database, it whirrs away and produces some data for me related to my initial entry. At best it undertakes an element of “tree walking” but that in itself is not enough to make it technical beyond it being a ‘better’ program.”
Common to the two decisions is that mere reference to a technical field of application is not enough to escape the exclusions to patentability in the UK. Instead, what is needed is a technical contribution made by the claimed subject matter. Further, the claimed subject matter must be limited to embodiments making the contribution; it is not enough that embodiments that make a technical contribution are covered. The decisions help make this very clear. While the UK and the EPO approaches are pretty different in many respects, both in terms of how "technicality" is assessed and the outcome, this aspect of the two decisions is in line with EPO practice. See here for the EPO Guidelines for examination for the requirement to be functionally limited to embodiments that achieve the technical effect and this Board of Appeal decision where the technical context of rolling stock maintenance was not enough for a technical effect to be acknowledged.