Businesses are increasingly recognising the value of artificial intelligence, meaning that pursuing IP rights for AI innovations is more important than ever. This article explores the rights available specifically for AI algorithms, in particular comparing the protection conferred by patents and trade secrets.
PATENTING
An AI algorithm may be patented. At the UK IPO, this group of inventions is “core AI”, defined as not having a specific application but rather advancing the field of AI itself. However, there are still strict requirements to fulfil for this type of invention to be considered patentable subject matter. The UKIPO has specified1:
“…the effect must be something more than an effect derived by the invention being just a better algorithm or well-written program running on a conventional computer (which would fall solely within the computer program exclusion). The core AI must bring about a change to the technical operation of a conventional computer, not just a change to the way a program or algorithm works.
For example, we consider that a core AI invention may make a technical contribution if its instructions define:
-
- a functional unit of a computer (e.g. GPU or special-purpose accelerator, etc.) being made to work in a new way, or
- new physical combination of hardware within the computer”
The UK IPO has also set out examples of core AI inventions which would meet the above requirements:
- Processing neural network on a heterogeneous computing platform
- Special purpose processing unit for machine learning computations
- A multiprocessor topology adapted for machine learning
and those which would not:
- Optimising a neural network
- Avoiding unnecessary processing using a neural network
- Active training of a neural network
If an invention uses known AI algorithms, but in a novel and inventive way which imparts a technical effect, patent protection may be obtained for the entire process. At the UK IPO, this group of inventions is “applied AI”. The technical effects generally accepted are:
- The performance of specific technical processes lying outside of the computer on which the algorithm runs, or
- Improving an internal process within the computer itself.
The EPO’s approach to AI inventions can be read about in the Guidelines for Examination G-II, 3.3.1. Similar to the UKIPO, the EPO will exclude any subject matter relating to computer programs and to mathematical methods “as such” but will not exclude such inventions if they achieve a technical solution to a technical problem. Only the specific features of the claim which contribute to the technical character of the invention will be used in the assessment of inventive step (“The COMVIK approach”).
Examples of technical contributions made by mathematical methods are set out in Guidelines for Examination G-II 3.3, and include:
- controlling a specific technical system or process, e.g. an X-ray apparatus or a steel cooling process;
- digital audio, image or video enhancement or analysis, e.g. de-noising, detecting persons in a digital image, estimating the quality of a transmitted digital audio signal;
- encrypting/decrypting or signing electronic communications; generating keys in an RSA cryptographic system;
- optimising load distribution in a computer network;
- providing a genotype estimate based on an analysis of DNA samples, as well as providing a confidence interval for this estimate so as to quantify its reliability;
- providing a medical diagnosis by an automated system processing physiological measurements.
TRADE SECRETS
Trade secrets are IP rights on confidential information which may be sold or licensed2. No registration or public disclosure is required, making trade secrets a good option if the invention is used only internally, or it cannot be easily reverse engineered once the invention is released to the public. The requirement is that the information is secret (known only by a limited group of persons), “reasonable steps” are taken to keep the information a secret, and that the information retains its commercial value by virtue of being kept a secret.
If, for example, an invention is a process / method employing known AI algorithms that improves the accuracy of a prediction relating to a business method - for example, a predictor of sales for a new product - patent protection could be difficult to obtain. A trade secret could be a sufficient alternative. However, it is worth considering how easily a competitor could reverse engineer the invention, since trade secrets do nothing to stop competitors independently developing and using their own version.
Our article “Using trade secrets to protect software and software-based innovations” provides a detailed analysis of when trade secret protection is appropriate for software inventions.
COPYRIGHT
Copyright subsists in computer code, which (as it is written down) comprises a literary work. In the UK, it is owned by the person which wrote the code (or, where that person wrote it in the course of their employment, by their employer), and subsists automatically without needing registration. If a third party copies that code, they may well have infringed copyright. We recommend ensuring that, where you have developed an AI algorithm, you own copyright in that algorithm by obtaining assignments from any consultant or contractor who assisted on its creation, and that you keep records of the development of that algorithm by retaining evidence of its development (such as metadata).
To learn more about IP rights across all aspects of AI, head over to Ben Lincoln’s article “Energizing artificial intelligence”, which discusses in particular how AI-related data may be protected.
This article forms part of our AI Hub, which you can access here.
Potter Clarkson’s specialist electronics and communications team includes a number of attorneys with extensive experience in software, and AI inventions. If we can help you with an issue relating to the protection and commercialisation of innovation in any area artificial intelligence, please get in touch.
FURTHER READING
- Examining patent applications relating to artificial intelligence (AI) inventions: The Guidance - GOV.UK (www.gov.uk)
- Trade Secrets – Everything you need to know (wipo.int)
- Impact of artificial intelligence on UK trade secret law - GOV.UK (www.gov.uk)
- Shh! The importance of keeping your trade secrets, secret - Intellectual Property Office blog
