Recently, I wrote about how the EPO looks at the patentability of AI inventions on the basis of their technical implementation and what the EPO case law suggests this should mean. This has not been much considered by the UK Patent Office or courts but a recent patent office hearing decision found that being implemented in “fixed-function circuitry hardware” is enough for an invention based on a new mathematical method to be considered patentable in principle**. Maybe not that surprising, but since this case made it to a Patent Office hearing (the last stage of examination in the UKIPO before a decision to refuse is issued), clearly not all examiners agree.
This case will make a useful addition to applicants’ arsenal for hardware-based AI cases.
What is more, since the UKIPO looks at the technical contribution of an invention to decide on inherent patentability but takes account of all features of a claim, whether of technical character or not, for the assessment of inventive step, it may well be that a broader class of fixed-function hardware inventions may be patentable in the UK as compared to the UKIPO. This will be useful to bear in mind when deciding on which office to use for these kinds of inventions.
As this case illustrates, AI is an area of technology where the office’s approach is still settling. The UKIPO is very keen to provide applicants with a good understanding of how they approach inventions in the field of AI and are working on simple examples to illustrate their approach to examination in this field. I am lucky to have been asked to contribute to this effort with a group of my peers in the UK profession. The UKIPO is to be commended for this approach to helping applicants make informed decisions at the filing and prosecution of applications related to AI!
** The case does not relate to AI but is highly relevant since AI technology as such are considered as mathematical methods by the UKIPO (and the EPO, as well).