The Supreme Court has ruled on the appeal in Emotional Perception AI Ltd v Comptroller General of Patents, Designs and Trade Marks regarding the application of the exclusion from patentability of computer programs “as such”. This is the first time the UK Supreme Court has ruled on the patentability of a computer related invention so is a significant decision.
Whilst it provides us with some answers on the test for assessing whether an invention is excluded from patentability or not, and on what classifies as a computer program, questions on the application of such test to computer-implemented inventions, especially those using AI, remain.
A brief background
The appeal concerns whether it’s possible to obtain a UK patent for an invention implemented using a type of artificial intelligence, an artificial neural network (ANN). The invention in question is a system for providing file recommendations, commonly in the form of music tracks. The patent application was refused by the UKIPO on the basis that it fell within the statutory exclusion from patentability for a “program for a computer … as such” under s.1(2)(c) of the Patents Act 1977. This legislation derives from article 52(2) of the European Patents Convention. After a succession of appeals, the Supreme Court was asked to rule on this issue.
What we know following this decision
The Aerotel approach no longer applies, “any hardware” will do
Since 2006 UK courts have used the Aerotel approach to assess whether an invention is excluded from patentability by s1(2)(c). This involves four steps:
- Properly construe the claim
- Identify the actual contribution
- Ask whether it falls solely within the excluded subject matter
- Check whether the actual or alleged contribution is actually technical in nature
This approach has been criticised for confusing the test of what is an invention with the other requirements for patentability. Reviewing the technical contribution of the claim to the known art involves considerations of novelty and inventive step which are independent requirements of patentability, separate to the exclusions in article 52(2). The Supreme Court has now rejected the Aerotel approach. This aligns the UK with Europe as the European Patent Office had rejected Aerotel in a number of cases.
The Supreme Court has now endorsed the European “any hardware approach” as the first stage in identifying whether there is an invention. This means that if the subject matter of the claim involves any hardware, then the exceptions in article 52(2) do not apply. This imposes a low hurdle on what can classify as an invention but is explained by article 52(2) only applying to excluded subject matter “as such”.
Applying this to computer implemented inventions, the invention avoids the exclusion by using a computer, computer readable storage medium, or other technical means. This is a significant leap forward as to what classifies as a computer implemented invention. Although the hurdles of novelty, inventive step and industrial application still need to be overcome before the invention can be patentable.
A new intermediate step focusing on technical contribution
A new intermediate step is to be applied to assess which features of the invention contribute to the inventive step. Inventions can include technical and non-technical features but features which do not contribute to the technical character of the invention should be ignored when assessing novelty and inventive step.
Non-technical features are only excluded “as such”. So, only those features that do not interact with the technical subject matter of the claim should be excluded. To filter out these features you need to:
- Dissect the subject matter into component features
- Review the role of each feature by reference to its contribution to the technical character of the invention judged as a whole
To summarise, the steps for assessing patentability following this decision are:
- Does the subject matter of the claim qualify as an invention?
- Filter out non-technical features of the invention that do not interact with the technical subject matter of the claim
- With reference to the remaining features, is the invention novel and does it involve an inventive step?
An ANN is a program for a computer
Having looked at the test to be applied to the exclusions from patentability, the Supreme Court then looked at whether the exclusion for “programs for computers” was relevant to ANNs.
The Court decided that an ANN is an abstract model which takes a numerical input, applies a series of mathematical operations, then outputs a numerical result at successive layers. Whatever form of machine it is implemented on, it constitutes a set of instructions to manipulate data in a particular way to produce a desired result. It is therefore a program for a computer and the exclusion from patentability for “programs for computers” potentially applies.
The ANN makes a technical contribution so is not excluded from patent protection
The Supreme Court then considered if the entire subject matter of the ANN, as set out in the claims, fell within the exclusion, or whether it included technical features and so qualified as a patentable invention.
Using the “any hardware” approach, the claims refer to a database, a communications network and a user device, so hardware is present. That is enough to show the subject matter has technical character and is not a computer program “as such”. So, the patent should not have been refused protection by the IPO on the grounds that it was excluded.
What we don’t know following the ruling
How will the UK apply the intermediate step?
The Supreme Court acknowledged that, as part of the intermediate step, it is open to the UKIPO and UK courts to adopt any appropriate method to identify the technical character of an invention viewed as a whole. This does not have to replicate the preferred European method which is a problem and solution approach.
Whether the UK goes its own way on identifying technical character remains to be seen, but we can expect to see reasoning and cases on this point over the next few years. There will also be fresh IPO guidance as its Manual of Patent Practice will be updated following this decision and the overturning of the Aerotel test which has applied for the last twenty years.
Will this ANN gain patent protection?
The Hearing Officer, High Court and Court of Appeal all heard arguments framed round the Aerotel test. As it hasn’t been applied before in the UK, the Supreme Court received no arguments on how the intermediate step should be conducted, or how it should be applied to computer implemented inventions. The Court therefore felt unable to apply this test to the ANN which was the subject of Emotional Perception’s patent application.
Conscious that the appeal raises issues of fundamental importance to computer implemented inventions (especially in the field of AI) and that any analysis of the intermediate step would create binding precedent, the Supreme Court didn’t want to set such a precedent without having heard arguments on the new test. That is understandable, however the Hearing Officer now has the unenviable task of deciding:
- How the new steps apply to the claims of this patent application
- Which features of the claims contribute to the technical character
- Whether the features which contribute to the technical character are novel and involve an inventive step
This feels like a heavy task and one that will be watched with anticipation by AI inventors, legal commentators, patent agents and the technology community alike.
Our IP team can advise on the application of the exclusions from patentability to your invention. As well as issues around novelty and inventive step in relation to inventions, including computer implemented inventions and those developed using AI.
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