Patent applications relating to artificial intelligence (AI) - UKIPO Guidance

January 18, 2023

The UK Intellectual Property Office (UKIPO) has published enhanced guidance for examining patent applications relating to artificial intelligence (AI) inventions.

The guidance contains both guidelines for examining AI inventions, and eighteen scenarios that reflect how the patentability of AI inventions would likely be assessed. The UKIPO stresses that the scenarios are not a source of law and are non-binding.

The UKIPO states that patents are available for AI inventions in all fields of technology. AI inventions are typically computer-implemented and may rely on mathematical methods and computer programs in some way. UK patent law excludes from patent protection inventions relating solely to a mathematical method “as such” and/or a program for a computer “as such”.

However, these exclusions are applied as a matter of “substance not form” by considering the task or process an AI invention performs when it runs. When the task or process performed by an AI invention reveals a technical contribution to the known art, the AI invention is not excluded and is patent-eligible.

An AI invention is likely to make a technical contribution if, when it runs on a computer, its instructions:

- embody a technical process which 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.

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