Out-Law News 4 min. read
25 Mar 2021, 10:43 am
One possible legislative change is to the Patents Act 1977, to make it possible to obtain a patent for an AI-generated invention in the UK. The IPO has also pledged to publish enhanced guidelines to make it clearer when AI inventions would be considered to be excluded from patentability.
Reforms to UK copyright law could involve amending or adding to the existing exceptions to copyright, to address the risk of copyright infringement arising from using AI tools for the purposes of text or data mining.
A whole new category of copyright in UK law, to recognise copyright works that are created by AI systems and not by humans, is one other option for legislative change that the IPO has hinted at.
AI has permeated all industries. As such, the need to provide businesses with greater comfort that their R&D investment in such technology may be protected becomes more pressing
Details of the potential reforms were outlined by the IPO in response to feedback it obtained to a call for views exercise which it carried out between September and November 2020, to which it received 92 responses from a wide range of stakeholders, including IP rights holders, producers of AI technology and academia.
No imminent changes to UK laws applicable to trade mark or designs are expected, nor to the law on trade secrets either, though the IPO said it would keep this under review given the pace of change in use of AI and its potential to impact the IP framework.
On the question of whether UK law should enable an AI system to be classed as the inventor of a product or process for the purposes of obtaining a patent, the IPO said "there are mixed views". It said many respondents to its call for views were of the belief that the current approach to inventorship criteria is potentially "detrimental" to innovation.
Last year, the High Court in England and Wales ruled that the Patents Act 1977 provides that a person making a patent application must be a 'person' with legal personality, whether a human or corporation, and that a patent can only be granted to such a 'person' with legal personality. An appeal of this decision is to be heard this summer.
The IPO said it will consider reform in this area "to ensure the intellectual property systems support and incentivise AI generated innovation", that there is "transparency in the innovation process", and that the patent "inventorship criteria do not present a barrier to protecting investment in AI generated innovation".
"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.
While some respondents from the technology sector believe content generated by AI should be eligible for protection by copyright, others from the creative industries said that copyright should prioritise human, not machine, creativity
The IPO's report also explored the extent to which copyright law in the UK should apply to works generated by AI. The report drew a distinction in this respect between copyright works created by humans using AI tools for assistance, and copyright works generated solely by AI systems.
While some respondents from the technology sector believe content generated by AI should be eligible for protection by copyright, others from the creative industries said that copyright should prioritise human, not machine, creativity. Other respondents flagged existing copyright protections for computer generated works and said that this would encompass works created by AI, though some said that the law in this area is not clear as it stands.
According to the IPO, some academics had argued that AI generated works cannot qualify for copyright protection in the UK at the moment because they do not meet the legal standard for originality that currently applies – which includes that the work is the "author’s own intellectual creation".
The IPO's report highlighted some support across the creative and technology sectors for a new distinct IP right to be created in the UK to apply to AI generated works, in a similar way that specific rights in addition to copyright attach to sound recordings and broadcasts. "Such protection could give an investment incentive to those creating and using AI technology," the report said.
The IPO said that it would "consult on whether to limit copyright in original works to human creations (including AI-assisted creations)" as well as "on whether or not to replace the existing protection for computer-generated works with a related right, with scope and duration reflecting investment in such works".
In relation to copyright exceptions, the IPO said that it wants to get "a better understanding of the licensing framework in relation to AI" and "better understand the merits of [text and data mining] exceptions in this area, including the approaches taken in other countries". It said that "improved" copyright exceptions are one option "to support innovation and research", including potentially for enabling easier access to data protected by copyright for the purposes of training AI systems.
Mark Marfé, a patent law expert at Pinsent Masons said "Earlier this month, digital secretary Oliver Dowden set out the UK government's 10 tech priorities. Unsurprisingly this list included AI. AI has permeated all industries. As such, the need to provide businesses with greater comfort that their R&D investment in such technology may be protected becomes more pressing. We therefore expect further law and practice refinements over the coming year to keep pace with the fast moving development of AI-related innovations".
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