Protecting your invention: Understanding the impact of AI on patents

The advent of artificial intelligence (AI) has raised some big questions for patents in the UK and beyond. With two recent judgements defining what can be patented, Director of Patents Richard Ellis explains what the decisions mean and what to expect next.  

What is AI?

A reasonable definition of AI would be that it's technology that enables computers and machines to perform tasks that typically require human intelligence. Those tasks can include learning, reasoning and decision making. An AI system may have elements of perception, language understanding and problem solving.

Decision 1: Can AI be an inventor?  

According to the Supreme Court decision in the case of Thaler versus the Comptroller-General of Patents, Designs and Trademarks in December 2023, an AI system cannot be recognised as an inventor. In the UK, a person applying for a patent must identify the person they believe to be the inventor of the innovation they are patenting. Dr Stephen Thaler filed two patent applications with the UK Intellectual Property Office (UKIPO) naming an AI system he had created, DABUS, as the inventor. UKIPO rejected the applications because, under the UK Patents Act 1977, only a natural person can be an inventor. Dr Thaler appealed the decision and the High Court, Court of Appeal and the Supreme Court all upheld the UKIPO’s decision. The Supreme Court judges unanimously ruled that only a natural person can be named as an inventor on a patent application and that the current legal framework doesn't accommodate AI systems as an inventor. 

Dr Thaler had also applied for patents in the US, Australia, New Zealand and with the European Patent Office. These were also rejected on the basis that an inventor must be a natural person. So far, the only exception is South Africa – the South African Patents Act doesn't define the term inventor and so DABUS’s invention could be patented there. 

Decision 2: Are inventions that involve AI technologies patentable under UK patent law? 

In the UK, mathematical methods and software that has a ‘non-technical’ effect can’t be patented. Emotional Perception AI Ltd’s application to patent its artificial neural network (ANN) was ultimately rejected at the Court of Appeal in July 2024 on the basis that the invention was classified as a computer program and also did not provide  a tangible, practical improvement beyond what is excluded from patentability. . Following the decision, the IPO issued new guidance stating that examiners should assess whether an ANN implemented invention makes a contribution which is technical in nature. The decision sets a precedent for similar cases involving AI and machine learning technologies beyond ANN. 

The future

Patents and AI is an evolving area. The decision that AI could not be an inventor has significant implications for the future of AI and patent law – it highlighted the need for potential legislative changes to address the evolving role of AI in innovation and in society. Indeed, in the decision it was noted that there is a question of whether the definition of the term inventor itself needs to be expanded to include machines powered by AI. 

Part of the  purpose of the patent system is to foster innovation, so precluding certain inventions might even be against that policy. It's likely that the UKIPO, government and other bodies will continue discussions on how to adapt patent laws to keep pace with technological advances. 

It’s worth  noting that if AI was used as a tool as part of the invention process, as long as there was a natural person attributed as the inventor, then there shouldn't be any question over whether the requirements of the law have been met. In Dr Thaler’s case, he was adamant that he had no inventive input into the invention and the creation was all DABUS’s. 

Emotional Perception AI Ltd has been granted permission, from the UK Supreme Court, to appeal the case, and so this may not be the end of the story for whether inventions that involve AI technologies are patentable. The Supreme Court’s next move may have wide ramifications for the patentability of AI technologies in the UK