This article is part of our series on Emotional Perception AI Limited and the Comptroller-General of Patents, Designs & Trade Marks, following the High Court decision newsflash, article exploring the grounds of appeal, article reporting on the appeal hearing, and Court of Appeal judgment newsflash.

We have digested the judgment of the UK Court of Appeal. Our key takeaway for applicants is that the UK Court is attempting to further align UK outcomes for computer programs, including artificial neural networks (ANNs), with those of the European Patent Office (EPO). However, in doing so, the UK Court may have made it more challenging for applicants to protect inventions outside of conventional computer technologies, as they could now fall under the new, broader definitions of “computer” and “program for a computer”. That said, such challenges are familiar to those already faced at the EPO.

Assessment of computer programs at the UK IPO and EPO

Both the UK and EPO have statutory exclusions to patentability for programs for computers, but only to the extent that the invention relates to that subject matter “as such”. This is found in Section 1(2) of the Patents Act (PA) for the UK Intellectual Property Office (IPO) and in Article 52(2) and (3) of the European Patent Convention (EPC) for the EPO. The similarity of the assessment ends here.

At the UK IPO, invoking the statutory exclusion prompts an assessment of whether the actual contribution of the invention is technical under the Aerotel test, to determine whether a claim lies outside of the exclusion of Section 1(2) PA. In contrast, at the EPO, objections under Article 52 EPC are readily overcome by including “any hardware” in a claim. Then, it needs to be shown in the assessment of Article 56 EPC, inventive step, that the new features of the claim over the closest prior art contribute to the technical character of the invention by solving a technical problem, as set out in T 0641/00 (COMVIK).

Mr Justice Birss, as he was then, in Lenovo (Singapore) v Comptroller observed that “although in methodological terms the approach in the UK and the approach in the EPO may look different, in practice they reach the same result, at least usually”.

A machine that processes information

The UK Court’s finding for Emotional Perception AI’s ANN-based invention, that it did invoke the programs for computers exclusion, arises from a matter of law – specifically, the meaning of “computer” and “computer program” within Section 1(2) PA.

The definitions provided by the Court in the judgment were:

• Computer: a machine that processes information.
• Computer program: a set of instructions for a computer to do something.

Many commentators feel these definitions may be too expansive, potentially bringing a wider range of technologies under the purview of these terms than initially intended.

In our view, seen under the lens of alignment with the EPO, the definitions of “computer” and “computer program” need to be broad to invoke Aerotel, so that the UK IPO might reach similar conclusions as the EPO.

To explain why, we first consider the EPO’s stance on which features of a claim can contribute to the technical character. The Technical Boards of Appeal of the EPO have long recognised the existence of inherently technical features that do not contribute towards the technical character of the invention. This is summarised in G 1/19 (Pedestrian Simulation):

“An invention may have (i) technical features which contribute, (ii) technical features which do not contribute, (iii) non-technical features which contribute and (iv) non-technical features which do not contribute to the technical solution of a technical problem and thereby potentially to the presence or not of an inventive step. While (i) and (iv) are self-evident, features according to (iii) have been established by the case law described above (principle (F): non-technical features interacting with the technical subject matter of the claim for solving a technical problem). Case (ii) occurs if features that per se qualify as technical cannot contribute to inventive activity because they have no technical function within the context of the claimed invention, see e.g. T 619/02 … concerning perfumes.”

If the definitions of “computer” and “computer program” provided by the UK Court were narrow, different outcomes are more likely to have been arrived at by the UK IPO and EPO. Particularly, an inherently technical system that provides an aesthetic (or subjective) contribution could be treated differently. In Emotional Perception AI’s appeal hearing, Lord Justice Birss referred to a theoretical 1950s jukebox that provided aesthetic recommendations for songs using analogue electronics and mechanical switches. At the EPO, whilst an objection under Article 52 EPC would be readily overcome by the hardware features of such an invention, the claim as a whole may well be found to lack inventive step under Article 56 EPC. This is because, despite arising from hardware features, such features do not necessarily contribute to technical character of the invention (case (ii) features above), and aesthetic song recommendations would likely not provide technical character following T 0306/10 (YAHOO!) (a decision ultimately referred to in the UK judgment to conclude that Emotional Perception AI’s ANN-based invention did not provide an actual contribution that was technical)). In the UK, the exclusion would not be invoked under a narrow definition of “computer” or “program for computer”. The question of technicality then does not arise in inventive step in the UK, so arguably the jukebox would be allowable. Indeed, in the appeal hearing the UK IPO confirmed this to be the expected outcome.

It is therefore our understanding that to align with the outcomes of the EPO more closely, the UK Court had to cast the net very wide for what constitutes a computer and computer program, therefore making it more likely that the consideration of the actual contribution under Aerotel would be invoked.

While determining whether the actual contribution of the invention is solely in excluded matter is less straightforward than the EPO’s approach of assessing if the new features of a claim solve a technical problem, primarily due to the less rigid involvement of the prior art in the analysis at the UK IPO, the broad definitions of computer and computer program provided by the UK Court should lead to generally consistent outcomes. In practice, despite the different approaches to the exclusions to patentability by the UK IPO and the EPO, there is often significant overlap. EPO examiners occasionally adopt a method similar to the UK’s assessment of the actual contribution, in which many features of a claim are struck out due to their perceived aim in a non-technical domain, even before novelty of the claim is considered. The primary difference is that the EPO expresses the negative outcome as an inventive step objection over a common computer system, whilst the UK IPO would raise an exclusion to patentability.

Does this represent a change in UK IPO approach?

It is of notable interest that, when the 1950s jukebox that provides aesthetic song recommendations was referred to in the appeal hearing, the UK IPO reasoned that this would be allowed under the current approach.

However, under the broad definitions of computer and program for computer defined by the UK Court in the judgement, the 1950s jukebox may well be considered a computer, and its song recommendations part of a computer program. Consequently, further considerations of the actual contribution under Aerotel would be invoked, likely leading to the conclusion that the jukebox is excluded for the same reasons that the Court found the aesthetic song recommendations in the case of Emotional Perception AI’s ANN-based invention to be excluded.

Therefore, there appears to have been a material shift in UK law for inventions that are not conventional computing technologies but that fall within the broad definitions of computer and programs for a computer provided by the Court, albeit a shift that further aligns the UK IPO outcomes with the EPO outcomes.

Advice for applicants  

The broad definitions arrived at by the UK Court may ultimately be subject to change if Emotional Perception AI decides to appeal the judgment. However, given the alignment these definitions create between UK and EPO law, a narrower interpretation of these terms seems unlikely.

For applicants with inventions relating to conventional computing technologies, ANNs, or that could fall under the new UK definitions of computer (a machine that processes information) and computer program (a set of instructions for a computer to perform tasks), it should be remembered that these inventions are, in many instances, still patentable, subject to the approaches outline above for each jurisdiction. We have significant experience in navigating the exclusion at the UK IPO and the EPO’s inventive step approach.