As recently publicised, the UK IPO recently issued new guidance relating to examining patent applications relating to artificial intelligence (AI) inventions. The UK approach to software inventions is complex, as it is defined by multiple UK court decisions spanning multiple decades. The new guidance is concerned with understanding how to apply this UK approach to AI-related applications. The fact that this guidance has issued at all may reflect that the UK IPO acknowledges the increasing importance and complexity of applications concerning AI-related inventions. However, the limited focus on Bioinformatics still leaves some key questions in this field unanswered.
Technical vs. non-technical
Much of the guidance aims to help applicants and examiners distinguish between allowable inventions which make a technical contribution to the art, and “non-technical” contributions that solely fall within exclusions. Briefly, in UK practice, “non-technical” inventions relating solely to programs for computers are excluded from patentability. However, claims may be allowed if their contribution is nevertheless “technical” – typically relating to something outside the computer, or the use of the hardware and resources of the computer itself. Whether the contribution is technical or not is the key here, and much of the guidance aims to help applicants and examiners distinguish between these instances. UK practice differs from that adopted at the EPO, and this can lead to confusion for applicants in this space.
Exemplary “Scenarios”
The guidance was accompanied by a list of exemplary “Scenarios”, which are assessed as allowable or excluded. Usefully, these help pin down what the UK IPO consider patent eligible, and show a willingness to allow AI inventions when applied to an external technical process. As many bioinformatics applications will necessarily fall within this category, this is an encouraging development, and may suggest the start of a more applicant-favourable trend. The scenarios will further be of interest to applicants, who may benefit from being able to base their arguments for allowability, or their drafting in the first place, on one or more scenarios as written.
The scenarios include useful examples of claims which may be accepted by the UK IPO. In one, a method of determining the percentage of blood leaving a heart, based on training a neural network with ultrasound imaging data, was viewed as allowable. Usefully, this scenario provides evidence that AI inventions in or around the medical field may be patentable, even if their technical contribution skirts with the therapeutic and diagnostic exclusion.
Even the scenarios which describe excluded subject-matter contain encouraging instruction. One scenario concerns a method of using AI to analyse patient health records, in order to group patients based on correlated variables and identify “future medical needs of a population”. This was viewed as an excluded computer program as such, given the non-technical nature of grouping patients, even though the grouping of patients might have been useful for selecting patients for drug trials or for suggesting alternative treatments. Whilst a clearer statement on whether claims concerning the invention applied to these uses might be allowable (and under what circumstances) would have been useful, the Guidance does not substantively change practice in this regard.
Contribution of an AI invention relating to a method of medical treatment or diagnosis
Disappointingly, there is still little guidance for cases where the contribution of an AI invention relates to a method of medical treatment or diagnosis. Whilst a method of medical treatment or diagnosis carried out on the human or animal body is excluded from patentability in the UK, an AI invention can potentially provide a technical contribution if it assists with such a method. However, in our experience, UK examiners can still struggle with software claims where the contribution falls within or close to assisting with such a method. It also remains to be seen whether UK IPO examiners will be willing to generalise the guidance contained in these scenarios, or whether they will view them as relevant only to cases with very similar facts. If the guidance is only applied narrowly, a significant grey area remains around AI-related inventions and particularly in the field of bioinformatics.
We hope that these points will become clearer over time, and a body of legal precedent will build over the coming years as larger companies with a need for certainty pursue increasing numbers of bioinformatics applications.
Conclusion
Despite not substantively changing UK law or practice, the guidance contains much that is encouraging. The UK IPO is clearly taking the challenge of patenting AI inventions seriously, and has provided further reference material to support applicants when arguing for allowability, which may help applicants when arguing for patent eligibility for AI inventions in the field of bioinformatics.
Read more about what the new guidance means regarding Core AI.
This blog was originally written by Andrew Tindall.
