How will AI impact patents?

Written By Phillip Sanger

AI technologies are significantly speeding up innovation and R&D processes. Scientists using these tools have increased their number of patent filings by 39%. Clearly, the efficiencies AI brings mean it won’t be going anywhere.

Instead, the patent process will need to adapt and set boundaries on the role these technologies play in innovation development. This article will explain how using AI technologies could affect the patentability of an invention and what the impact could be on your business’s approach to R&D and patents. 

Can AI be an inventor? 

Whether AI technologies can be named as an ‘inventor’ on a patent or not has been tested under both UK and EU law with the DABUS case. This concerned patent applications filed by Dr. Stephen Thaler for two inventions (designs for a food container and emergency light system) created by the AI system ‘Device for Autonomous Bootstrapping of Unified Sentience’ (DABUS). 

In these 2018 filings, DABUS was credited as the sole inventor. Dr. Thaler claimed that, as the system’s owner, he could submit them on its behalf. However, despite several appeals, both the UK Supreme Court and the European Patent Office (EPO) refused the applications on the basis that an inventor must be a ‘natural person’. 

These judgements clarified that AI tools can’t be credited as an inventor on a patent application. A named inventor can only be a human with legal capacity. This also means AI-made innovations, where the technology identifies a problem and proposes a solution without human intervention, won’t meet the criteria for patentability. 

However, if AI has the following roles in developing an invention, it may be patentable:

  • It is a joint inventor (with a human)

  • It is used to verify an innovation’s outcomes

  • It finds a solution to a human-identified problem

  • It is used as a mere tool and is guided or instructed by a human who actually conceives the idea

Are inventions containing elements of AI patentable?

So AI can’t be an inventor- but can it be an invention? The EPO and the UK Intellectual Property Office (IPO) have slightly different criteria for patentable AI inventions. This is important to understand when writing an application for each jurisdiction. 

What AI inventions are patentable in the UK?

There’s no single UK definition or classification of what an AI invention is. However, its characteristic features and functions are set out by the IPO as follows: 

Diagram showing the characteristic features and functions of an AI invention under UK patent law.

The IPO also sets out two classifications of AI innovations:

  • A core invention that advances the AI field

  • An applied invention that uses the technologies and techniques to solve a problem in a field outside of AI

Both of these are considered to be ‘computer-implemented inventions.’ As such, they have to meet the patentability criteria of being ‘new’, involving an ‘inventive step’, and having an industrial application.

However, an application can be refused for computer-implemented inventions if:

  • It doesn’t make a technical contribution to the state of the art, isn’t technical in nature or is just an abstract idea 

  • It is a “mathematical method” or “program for a computer”, which is an exclusion under UK patent law

It is important to consider whether the AI element of the innovation you’ve developed falls under the above exclusions, as this may make it unpatentable. 

What AI inventions are patentable in Europe?

As in the UK, the EPO classifies AI inventions as ‘computer-implemented inventions’. These are treated differently by patent offices in different regions, so it's important to get advice that’s specific to the jurisdiction you’re filing in. 

However, there are some overall guidelines you need to consider before filing a patent that includes an AI invention: 

  • Computer-implemented inventions must meet the patentability criteria of novelty, the inventive step and industrial application

  • Computer programmes as such are excluded from patentability, although software with a technical character isn’t

  • Any innovation needs to be outside the abstract realm and solve a technical problem in a field, this includes a specific solution in the technological field e.g. a computer’s internal functioning

How can businesses patent AI inventions? 

The good news is that AI inventions aren’t automatically unpatentable. However, there are some specific exclusions that you need to be aware of before you file your application. The main elements you need to consider are:

  • Whether the invention makes a technical contribution to a field. This is the main test when determining the patentability of computer-implemented solutions, including innovations developed with AI technologies 

  • Making sure the patentability criteria are met, i.e. the innovation is new, has an inventive step and a technical application. Also check it doesn’t fall under specific exclusions in the patent law of the relevant jurisdiction

All of the factors above will affect the patentability of your AI invention. So to make sure your application is valid and watertight before you file it, it’s important to get expert advice. To get the right protections for your invention and help generate maximum business value, we can guide you through this new, growing field. 

Phillip Sanger
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