So it is finally here, the decision from the UK Supreme Court in the long-running saga starring Emotional Perception AI and the Comptroller-General of Patents. The stage was set to address the fundamentals of the UK’s approach for assessing statutory exclusions to patentability, including for software and AI. Has the decision rightly earned its place in the spotlight? With the last lines delivered, here are the must‑know consequences for innovators.
Innovation in software and AI is only excluded from patentability in the UK and at the EPO to the extent that the matter claimed relates to a computer program (or other statutory exclusion such as a mathematical method) “as such”. For the past 20 years, the UK has used the Aerotel test to assess patent eligibility and whether a claim falls within the statutory exclusion as such. In a significant departure, the Supreme Court ruled today that the Aerotel approach should be abandoned and replaced by the “any hardware” approach of the EPO set out by the Enlarged Board in G 1/19 (Pedestrian Simulation).
The “any hardware” approach means that claims containing at least one hardware feature, such as a computer processor or computer-readable storage medium, are not excluded from patentability. This represents a significant lowering of the hurdle for patent eligibility under Section 1(2) of the Patents Act 1977 compared to under the Aerotel approach. Going forward we therefore expect to see significantly fewer applications falling at this hurdle.
That is far from the end of the story, however. The Supreme Court ruled that all parts of what it referred to as “the Duns principles”, set out in T 154/04 (Duns Licensing Associates) and reiterated in G 1/19, should be followed by the UK courts, with the exception of the final principle. The Duns principles set out how claims that include features that, when taken in isolation, amount to one of the statutory exclusions should be assessed, not only under patent eligibility but also under novelty and inventive step. The final principle sets out requirements for the EPO’s problem-solution approach to inventive step, which the Court saw no reason to adopt, maintaining that the UK’s own inventive step approach laid out in Pozzoli is a legitimate approach.
In practice, following the Duns principles means the introduction of an “intermediate step” between patent eligibility and inventive step under Pozzoli. Echoing the words of G 1/19, it could be said that there is now in effect an additional intermediate step to assess the “eligibility of the feature to contribute to inventive step”. Features of a claim eligible to contribute to inventive step include those that, when taken in isolation, would amount to one of the statutory exclusions, but which, in the context of the invention as a whole, contribute to the technical character.
The Supreme Court did not prescribe how this intermediate step is to be assessed and deferred the application back to the Hearing Officer of the UK IPO. It will therefore be up to the UK IPO and UK courts to determine how to implement the intermediate step and realise the Duns principles in practice. An example of an appropriate method was given by the Court as using the alleged “inventive concept” of the claim in Pozzoli.
Where does this all leave innovators of software and AI inventions? Abandonment of Aerotel does represent the removal of a significant hurdle to patentability in the UK. That said, it remains to be seen exactly how the UK IPO will implement the new intermediate step. On the one hand, the UK IPO may simply import the reasoning it presented for the exclusions to patentability under Aerotel into the assessment of novelty or inventive step. This means applicants would be no better off as inventions previously excluded from patentability would simply be found to lack an inventive step (or even novelty). On the other hand, as observed by both Emotional Perception AI and the interveners in the Supreme Court proceedings, claim features that, when taken in isolation, amount to one of the statutory exclusions but in the context of the invention as a whole contribute to technical character, were often not being duly considered under the Aerotel approach. These features could now be considered under the “any hardware” plus “intermediate step” approach.
The curtain may have fallen on Emotional Perception AI’s time in court, but the UK IPO’s performance is still to come. We now look to the next scene as the case returns to the UK IPO.
Previous articles in this series:
- Future of AI patentability discussed at UK’s highest court – Carpmaels & Ransford – Law Firm
- Comptroller-General v. Emotional Perception AI Appeal: Hearing update – Carpmaels & Ransford – Law Firm
- Implications of the Emotional Perception AI ruling on UK patent law and EPO Alignment – Carpmaels & Ransford – Law Firm
- Emotional Perception AI v. UKIPO: Grounds of appeal update – Carpmaels & Ransford – Law Firm
- All change at the UKIPO for AI-based inventions – Carpmaels & Ransford – Law Firm
- Key Ruling on UK AI Patentability Announced – Carpmaels & Ransford – Law Firm