Facts
Emotional Perception AI Ltd applied for a patent for a system and method that uses an artificial neural network (ANN) to recommend media files, such as music tracks, videos or texts, that produce an emotional response similar to a file the user is interested in. The Hearing Officer at the UK Intellectual Property Office (UKIPO) refused the application as a program for a computer 'as such'. The High Court allowed an appeal, but the Court of Appeal restored the refusal. Each decision applied the four-step test set out by the Court of Appeal in Aerotel in 2006, which had been followed for about twenty years.
Question
The appeal raised three issues: whether the Aerotel approach should still be followed; whether an ANN is, or contains, a 'program for a computer' within Article 52(2)(c) of the European Patent Convention (EPC) and section 1(2)(c) of the Patents Act 1977; and whether the entire subject matter of the claims was excluded. The divergence between Aerotel and the case law of the European Patent Office (EPO) lay at the centre of those questions.
Decision
The Supreme Court unanimously allowed the appeal in a judgment given by Lord Briggs and Lord Leggatt. Aerotel should no longer be followed; the 'any hardware' approach endorsed by the EPO Enlarged Board of Appeal in G1/19 applies instead. An ANN is a 'program for a computer', being a set of instructions that a computer of any kind can follow. But because it can only be implemented on hardware, the claims have technical character and are not excluded as a program 'as such', so the UKIPO was wrong to refuse on that ground. Next comes an 'intermediate step' that filters out features not contributing to the invention's technical character. The case was remitted to the Hearing Officer to apply that step and the remaining patentability requirements.
Why it matters
The judgment brings UK law on computer-implemented inventions into line with EPO practice after some twenty years of divergence. The threshold at the exclusion stage is lowered, and the weight of the assessment shifts to the intermediate step and to novelty and inventive step. The court accepted in terms that ANNs are computer programs but did not define how the intermediate step applies to them, so the patentability of AI inventions in the UK will be shaped by subsequent UKIPO and lower-court practice.
Related stages
Below: Court of Appeal, [2024] EWCA Civ 825. The application was remitted to the Hearing Officer; the outcome of the remitted examination is not yet known.