UK Supreme Court ruling on patents and AI is boost for innovation

Artificial intelligence has continued to dominate the headlines this week with the recent decision in the case “Emotional Perception AI Ltd v Comptroller General of Patents”, concerning the patentability of AI.

A full analysis from Partner Lara Sibley is set out below and we were also delighted to have been invited to contribute to the wider conversation by - amongst others - Reuters, MSN, The Law Society, AllworkSpace, London South East and Yahoo Finance.

"The decision considers whether the UK approach to patent eligibility of software inventions (based on the leading case Aerotel Ltd v Telco Holdings Ltd [2006]), should continue to be followed, given the more recent decision on this issue from the European Patent Office (EPO) Enlarged Board of Appeal in 2021 (G1/19). 

 The UK approach, referred to as “Aerotel”, requires identifying the actual contribution (what the inventor has really added to human knowledge) and then assessing whether it falls solely within the subject matter excluded from patent eligibility. In practice, this approach often means that computer hardware features are not considered part of the “contribution”, and therefore the patent claim is found not to be patent eligible. 

 Today’s decision rejects the UK “Aerotel” approach, setting out a new approach that aligns more closely with that of the EPO. Following this new approach, and in line with the EPO, if the claim includes any physical hardware (e.g. a computer), it passes the initial “eligibility” assessment. 

 As a next step in the approach, an assessment of inventive step is performed. Again in line with the EPO, it is set out in the decision that only “eligible” claim features should be taken into account in the assessment of inventive step. However, whereas the EPO assesses here whether a particular claim feature contributes to the technical character in the context of their “problem solution approach” to inventive step, today’s decision suggests that “it is open to the UKIPO and to the UK courts to adopt any appropriate method of identifying the technical character of the invention … An example of an appropriate method might in a particular case be to identity the alleged “inventive concept” of the claim, as explained in Pozzoli”. This seems to leave open the question of how the “eligible” claim features should be identified when assessing inventive step in the UK. However the distinction may be more one of form than substance:  the EPO’s approach seems to be approved, including a reference to solving a technical problem.  The decision also notes that the UK courts “should respect and follow the [EPO] Enlarged Board’s decisions and any uniform jurisprudence of the Boards of Appeal unless convinced that they are wrong or beyond the ambit of reasonable difference of opinion”.

The decision also considers the new approach in relation to the patent application in question, which is directed to a system for providing media file recommendations (such as for music) based on perceived emotional character, using a trained artificial neural network (ANN). It finds that whilst an ANN is an “abstract entity”, the claimed system passes the patent eligibility test, since the ANN can only be implemented on some form of computer hardware. The decision does not consider how the subsequent assessment of inventive step would be applied, leaving this to the UKIPO to determine.

In practice, the new approach set out in this decision may be helpful to patent applicants in the AI space, meaning that a meaningful search is more likely to be performed by the UKIPO, and meaning that more consistent outcomes are seen between examination at the UKIPO and at the EPO. The intention of the Supreme Court appears to be that non-technical features, such as an ANN, are required to contribute to the technical character of an invention, viewed as a whole, in the same way as before the EPO.  However, it is open to the UK to adopt any appropriate method of identifying this technical character – there is no need to use the EPO’s problem and solution approach.  It remains to be seen how, in practice the UKIPO will interpret the decision and adapt its assessment of inventive step – the result could be more uncertainty in examination outcome at the UKIPO, at least in the short term”. 

In the immediate future, applicants with open or recently refused cases should consider whether examination can be re-opened; it is anticipated that the UKIPO will look favourably on extension requests while the dust settles on this landmark decision.

Lara Sibley, a partner at Marks & Clerk, agreed the ruling may be helpful to applicants for AI-related patents, but cautioned that it remained to be seen how the Intellectual Property Office will interpret and apply it.

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