AI-related invention not patentable, rules High Court

Mark Marfé,  Sarah Taylor and Krishna Kakkaiyadi of Pinsent Masons, the law firm behind Out-Law, were commenting after the High Court in London dismissed an appeal against a decision of the UK Intellectual Property Office (IPO) from last year, which rejected a patent application for an AI-related invention.

Daniel Alexander QC, sitting as a deputy judge in the High Court, ruled that the invention, which related to "a structured array of data that is said to enable the evolution of artificial intelligence (AI)", was not eligible for patent protection in the UK, despite arguments to the contrary raised by the patent applicant, Corey Reaux-Savonte. The judge reached that view after agreeing with the hearing officer at the IPO that the invention as described in the application was no more than an arrangement of computer code.

Under the UK Patents Act, amongst other exclusions, an invention cannot be patented if it is "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer … as such". The judge referred to another recent decision that summarises the relevant law.

As a result of UK case law, if a computer-implemented invention makes a "contribution" to the field in which they are applied they can be patentable, provided that contribution is a technical one.

"What this means is not always clear," Kakkaiyadi said. "In earlier decisions, UK courts have provided a few illustrations or ‘signposts’ as to which kinds of technical effects could render the invention patentable."

In his judgment, Daniel Alexander QC said that Reaux-Savonte's invention was "not clearly described in the specification" of the patent application and so, in evaluating the hearing officer's approach, he reflected on what was said by Reaux-Savonte at an IPO hearing.

According to a transcript of the hearing published by the court, Reaux-Savonte agreed with the hearing officer's summary that "… the contribution that [he had] made or that is provided by the invention is a hierarchical system of computer code that facilitates evolution over time".

It was on the basis of that characterisation, in tandem with the description contained in the patent application, that the hearing officer had considered the invention's technical contribution to previously known and disclosed innovation. The judge endorsed the hearing officer's approach.

In this case, it was deemed that the invention claimed was simply not described clearly or completely enough for the court to derive a technical contribution beyond some kind of computer code, which by itself is not patentable. The inventor described his invention as a means to generate code analogous to the operation of the genome and DNA. However, the contribution was found to simply be a particular way of structuring and organising data to modify computer code over time.

Taylor said: "The ruling serves as a reminder to patent applicants that it is imperative to fully and clearly describe the invention and why it is innovative in your patent application."

Taylor said the circumstances of this case were unusual, as Reaux-Savonte had drafted the patent application himself, with no professional representation, and also been unrepresented in the proceedings before the court. Because his patent application had very little specific technical detail, the examiner could not undertake the usual searches to determine whether the invention was in fact new and not obvious. 

Kakkaiyadi said that, under the existing legal framework, it is possible, in theory, for an application to be granted for patenting an AI-related invention. However, he said that "once a patent application is determined not to be excluded from patentability following the assessment of its technical contribution, the general requirements for inventions to be novel and inventive might still pose additional challenges to computer-implemented inventions such as AI".

Taylor said that, while it did not assist Reaux-Savonte's case, the UK government is considering reforming patent law in a way which could assist those seeking to patent AI-related inventions in future.

She said: "The government is aiming to make the UK a global centre for AI and data-driven innovation, with the best environment for developing and using AI. Consideration is being given to whether UK patent legislation needs to be refined to accommodate AI inventions and incentivise innovation. The UK government ran a consultation last year to consider this issue, the results of which are pending."

Marfé said: "Patents offer a 20 year monopoly and are therefore seen as providing the 'gold standard' of IP protection. However, patents are not always available. This case is a reminder that patents should be considered alongside other IP rights such as copyright and trade secrets which also offer protection for AI-related inventions. A patent application is a public document. If there is doubt that the patentability threshold will be met, keeping the invention secret provides an alternative form of protection."

Marfé said that some advantages of trade secrets are that they cover a broader range of information and can exist indefinitely provided that the information is kept secret. 

Taylor also said this latest ruling, and the prospect of legislative reform, will be of interest to businesses in a wide range of sectors.

"AI is beginning to permeate all industries, including healthcare, transport and governmental digital initiatives," Taylor said. "Businesses will want to know how their investment in the R&D of such technology may be protected, impacting the potential return on their investment in such technology, such as through their ability to licence it out to others to use."

Taylor said that a separate question relevant to the patentability of AI is whether AI systems can be named as inventors. Currently in the UK, as confirmed by the High Court last year, they cannot. However, Taylor said that ruling has been appealed, with hearings scheduled to take place in July 2021, meaning businesses can expect further developments in this field in the coming year.