Practical Implications of the New CII Guidelines for Applicants

The UK Intellectual Property Office (UKIPO) released new guidance last week on how computer-implemented inventions such as AI are examined.

 

The UKIPO previously took a strict stance, refusing to search some claim sets if they were deemed to solely relate to computer programs.

 

The new guidelines bring good news for applicants:

• The new approach should relax the UKIPO’s stance on excluded subject matter, making it better align with the European Patent Office’s practice.
• For patent applications currently in examination, applicants can request that excluded subject matter objections raised under the Aerotel approach be re-examined under the new approach - hurrah!
• There is plenty of room for interpretation as to how the new guidelines should be applied, and this will give applicants room to manoeuvre as the new approach is tested. 

For a more detailed analysis of the guidance and its implications for inventive step, read:  The Impact of UKIPO Examination Guidance for CIIs on Inventive Step Assessment.