A ruling issued by the UK’s Supreme Court on 11 February signals a change in the way many inventions will be assessed by UK patent examiners. Following the lead of the Enlarged Board of Appeal of the European Patent Office (EPO), in its decision G1/19 handed down in 2021, there is now a clear separation between whether the defined invention is inherently excluded from patent protection as a computer program, distinct from whether the features are truly new and inventive.
Until now, the UK approach to assessing software inventions was based on a 2006 ruling (‘Aerotel’). That test involved establishing where the alleged “invention” lay in relation to any software and hardware components within a system. Where the new aspects of the defined features related solely to software, the application would typically be refused, even if software was defined in the context of a system incorporating hardware.
The decision
Today’s ruling in Emotional Perception AI Limited (Appellant) v Comptroller General of Patents, Designs and Trade Marks (Respondent), on appeal from [2024] EWCA Civ 825 – appears to replace elements of that test. The UK approach to assessing software inventions will inevitably change to align more closely with that of the EPO. Historically, the EPO has taken a more positive approach to allowing applications in this field. The EPO approach involves considering the features as a whole, to determine whether they are sufficiently technical. Systems involving hardware are not refused simply on the grounds of being a computer program. However, assessment of whether their features are inventive is treated separately, and some will fall at that hurdle.
The patent application at issue in this case involved a trained artificial neural network (ANN). The UK Intellectual Property Office (UKIPO) had initially refused the application on the basis that the crux of the invention was said to lie solely in the implementation of the ANN. The application was found to be excluded from patentability on the basis that the invention relates solely to a “program for a computer”. The Supreme Court’s ruling makes it clear that although the ANN is a program for a computer, it also involves technical means because it can only be implemented in hardware. On that basis, a definition directed to the implementation of an ANN in a system, should no longer be at risk of falling within the UK’s exclusions from patentability. That element of the initial reasoning to refuse the application has been overturned.
What this means for software patenting in the UK
There are still questions to be answered about whether or not the implementation of the invention is truly inventive. The Court has referred that issue back to the UKIPO to form its own judgement on that point, noting that the reasoning set out in today’s ruling appears to allow consistency with the UK’s current approach to determining the inventive step of applications. However, it remains to be seen whether an adjustment is needed to existing practice.
In determining whether a software application provides an inventive step, an examiner will need to consider the features contributing to the technical character of the system. Inherently non-technical features cannot contribute to assessment of an invention under current EPO practice, and it seems likely that the UK will follow this approach.
We expect to see an update to examination practice from the UKIPO in the coming days.
