"To achieve these aims, we will build on the suggestions made by respondents and consult later this year on a range of possible policy options, including legislative change, for protecting AI generated inventions which would otherwise not meet inventorship criteria," the IPO said.
The Patents Act also sets out the grounds of patentability that inventions must satisfy in order to be protected by patents, as well as exclusions on patentability that apply. 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". However, 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.
According to the IPO's summary of the responses to its call for views, respondents expressed concern about the way existing patent exclusions apply to AI, and emphasised the need for clarity in this regard. It said many respondents believe "it is hard for core AI inventions to meet the tests for patentability set by the UK courts and applied by the UK IPO", with the majority concerned that the inability to obtain patent protection was a disincentive for innovation in the AI sector. However, the IPO said that there are others who had expressed the view that the balance struck in the current patent system is the right one.
The IPO said that it "agrees that AI inventors need UK patent exclusion practice to offer more clarity to improve predictability for patent application outcomes", and confirmed that it would "publish enhanced IPO guidelines on patent exclusion practice for AI inventions".
The call for more international harmonisation in relation to patent exclusion practice was also acknowledged. The IPO indicated that it would review its practice and establish any difference in outcome for AI patent applications filed at the IPO and European Patent Office.