Rewriting the Rules: Inside the UKIPO's New Practice Note on AI Patentability

Following the UK Supreme Court’s decision in Emotional Perception AI Ltd v Comptroller-General (“Emotional Perception”), the UKIPO has released updated guidance on the search and examination of AI inventions, and computer implemented inventions more generally. The practice note, issued on 14 July 2026, reemphasises the use of the Pozzoli approach and requires that examiners reevaluate excluded matter objections, disregarding Aerotel. The practical prosecution guidance leaves two questions that may need to be answered by the courts in the future: what constitutes technical character, and when should technical character be assessed relative to the prior art. 

The practice note provides guidance for applying the three-step approach in practice, instructing examiners not to apply the Aerotel test. In a significant change to UK practice, the UKIPO directed examiners not to follow sections 1.07 to 1.51.7 of the Manual of Patent Practice, leaving EPO guidance to fill the gap until the Manual of Patent Practice is updated.

Examiners are directed to apply the first hurdle and intermediate step as described in Emotional Perception and may refer to the EPO Guidelines for Examination G-II, 3 for additional information. Having said this, the UKIPO notes that examiners are not bound by EPO guidance. Given this, it is not entirely clear how examiners will identify technical character, since UK case law on the subject is limited, and the Supreme Court in Emotional Perception remitted the intermediate-step analysis of the invention to the UKIPO. 

While the Supreme Court decision suggested that the inventive concept (Pozzoli step 2) may be an appropriate method of identifying technical character, the practice note focuses on EPO Guidelines and provides no UK-specific examples.

The new guidance may also have an effect on how the UKIPO conducts searching. Prior to Emotional Perception, UK examiners often declined to conduct searches for computer implemented inventions that were deemed clearly excluded from patentability. This practice led to difficulties for UK startups, who did not receive any indication of novelty prior to filing foreign priority claiming applications. Following Emotional Perception, the UKIPO informally let us know that they were going to, at least temporarily, end its practice of declining searches for computer implemented inventions on an excluded subject matter basis. Disappointingly, the new UKIPO practice note does not formalise this previous informal guidance encouraging examiners to conduct more thorough searches. 

In addition, the practice note states that the search examiner is required to apply the intermediate step in order to carry out a proper search, in that “the search examiner should identify which features contribute to the technical character of the claimed subject-matter and ensure that their search under section 17 covers those features.” In our view, this opens the door again for examiners to skip searching where they determine the claim to be primarily made up of non-technical features. We are concerned that this may be a regressive step that could harm UK startups, but it remains to be seen what impact this change will have on UKIPO searches in practice.

In addition, the practice note leaves open an important question: whether prior art should be considered before or after the intermediate step. That is, whether only the distinguishing features over the prior art should be assessed for technical character.

On one hand, the technical features could be identified before the prior art search is performed, and then only those technical features could be searched. On the other hand, if technical character is determined in light of the prior art, then the prior art analysis should be performed beforehand. While in reality, these situations are difficult to reconcile, neither the practice note nor the most recent examination report provides an answer on which method will be implemented by the UKIPO going forward. 

In applying the second hurdle of the three-step approach, the UKIPO guidance maintains that examiners should refer to sections 2 and 3 of the Manual of Patent Practice, and “continue to assess inventive step using the approach set out in Pozzoli.” Section 3.16 of the Manual of Patent Practice warns that “a failure to use the structured Windsurfing approach to assessing obviousness had led the Patents Court to fall into the trap of using hindsight” as asserted by the Court of Appeal in Wheatley v Drillsafe Ltd.

However, the Supreme Court stated in Emotional Perception that “whether the conclusions reached on this appeal have any repercussions for and give rise to any need to adjust the methodologies currently used in the UK for assessing novelty or inventive step... will have to be left to a case where it arises.” In doing so, the judgment left open the possibility of future modification of the inventive step test in the UK. 

The Emotional Perception application has now undergone further examination at the UKIPO following the Supreme Court decision, and a hearing on this application was held on 4 August 2026. We attended the hearing as third party observers, although no decision was made on the day. We await the UKIPO’s decision in the coming months.

Emotional Perception has changed several aspects of UK patent prosecution, and aligned UK practice with European patent case law. Having said this, there seem to be continued questions regarding how the UKIPO is to assess technical character going forward. In our view, it seems likely that further case law will be required before applicants can have assurance regarding practice going forward. Whether this will be through further appeals on the Emotional Perception application, or through other applications, remains to be seen.

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