In the wake of the UK Intellectual Property Office (UKIPO) refusing an application with an Artificial Intelligence (AI) named as an inventor, the Office still seems keen to explore where they think AI can be useful for the patenting process. The latest insight is a study the UKIPO commissioned Cardiff University to undertake to explore the "feasibility, technical complexities and effectiveness of using artificial intelligence (AI) solutions to improve operational processes of registering IP rights". Specifically, whether AI can be used to assist or improve the prior art searching process.
Without going into too much detail, when you file a patent application it is allocated to an Examiner. This Examiner then carries our a prior art search where they search for any earlier documents (patent applications or otherwise) that disclose your invention, or something similar to it that would obviously be modified to arrive at your invention. This searching is time consuming and difficult. It is not uncommon for an Examiner in another country to find different documents due to the use of subtly different search parameters.
The results of the study are quite interesting, with the AI struggling to define the best search query. However, once provided with a search query the AI was able to identify the most relevant documents returned by the search. This is what you would expect as the definition of the appropriate search query is often the hardest task and may require the searcher to deviate from the language of the application to find alternatives. Whether the UKIPO pursue these AI-assisted tools in the future may make a big impact on the search results that patent applicants receive. With the UKIPO often used for a priority filing, the results of this initial search are often used to inform the international filing strategy.
From a Patent Attorney's perspective, the suggestion of having an in-built pre-filing search is an interesting one. Ultimately, it was decided that current AI tools are not able to achieve this. In the future, a step of the filing process could involve the UKIPO's software returning applications which it thinks may be relevant to your application before filing. This could be incredibly useful as a first pass when you are still able to freely alter the draft application.
In particular, many of my clients are small and medium sized businesses that do not always have the budget or desire for a comprehensive patent search before filing. If this pre-filing check reveals something highly relevant the draft application could be adjusted to leave them in a stronger position.
I'm also sure that every Patent Attorney has come across an application where the prior art is not really that relevant, but the text of the application leaves it difficult to distinguish over while strictly complying with restrictions on added subject-matter (particularly at the EPO, where this can be very strictly applied). If such a document were discovered by a pre-filing search the appropriate language to distinguish thereover could be freely inserted before filing.
The study identified the potential of new approaches combining AI with NLP and computational semantics, and highlighted the importance of human-centred descision and performance support tools.