The decision of the English Appeal Court has now issued in the Emotional Perception AI case. The decision brings some clarity into the area of potential patentability of Artificial Neural Networks (ANNs). It also brings the UK into line with the present practice of the European Patent Office (EPO). Further, the decision will likely override the recently issued UKIPO updated AI guidance.
What is the decision? The Court of Appeal has found that an ANN is like any other computer program. Having held this, the decision considered the ‘technical contribution’ test. The Appeal Court held that such test was appropriate to ANN cases, but that in this case, the test was not met.
The Appeal Court decision disagrees with and dismisses the decision of the High Court. However, the Appeal decision agrees with the UKIPO’s original decision. In 2022 the UKIPO had refused Emotional Perception’s GB Patent Application No. 1904713.3 on the basis that the invention fell solely within being a program for a computer as such (excluded under Section 1(2) of the UK Patents Act 1977).
How will the update affect practice? Of course, an invention is always defined by the claims. Therefore, in drafting the claims for an AI invention, care will be required to ensure that the defined invention provides the required ‘technical contribution‘ where possible.
What are our thoughts? We welcome the decision of the Court of Appeal in that it provides clarification on the patentability of AI inventions, and aligns the UK with the practice of the EPO. That said, we wait to see whether the decision will be appealed to the Supreme Court.
As has been the case with Computer Implemented Inventions (CII) cases for some time, correct drafting of the specification and careful claiming of the invention from the beginning is key to smoothing the pathway to grant. The adage that ‘prevention is better than cure’ definitely applies.
Follow the previous guidance of the UKIPO regarding showing ‘technical contribution’ when preparing CII/AI applications, and later ‘excluded matter’ objections can hopefully be avoided. Following the guidance of the EPO, as well as that given by G1/19 of the Enlarged Board of Appeal, would also be wise.
We have extensive experience in preparing and handling CII inventions before the UKIPO and the EPO. If you need any advice or assistance, then please contact us at: mail@morelandip.com. Please see our website news page for this and other topics.
