The Supreme Court has handed down a judgment which upends decades-long practice by redefining how courts should analyse whether computer-implemented inventions – including those involving AI – qualify for patent protection.

The case concerned a media-recommender system developed by Emotional Perception AI Ltd (Emotional Perception). The system involves the use of an artificial neural network (ANN) which is trained using data describing users’ emotional reactions to media files, such as music. Through this training it generates a numerical representation (or “vector”) for each track. By comparing these vectors, the system identifies similar tracks and recommends files predicted to evoke comparable responses in users.

When Emotional Perception applied for a patent for this system, the application was rejected by the Hearing Officer at the UK Intellectual Property Office (UKIPO) on the basis that it fell within the exclusion from patentability of “programs for computers…as such” under s.1(2)(c) of the Patents Act 1977 (which replicates Articles 52(2)(c) and 52(3) of the European Patent Convention (EPC)).

The High Court overruled the UKIPO’s decision, holding that the exclusion for “programs for computers…as such” had no application since an ANN is not a computer program at all. The Court also added that even if it were wrong on this point and the ANN was a program for a computer, there was a technical contribution such that it fell outside the exclusion from patentability.

The Court of Appeal disagreed. It restored the Hearing Officer’s decision, holding not only that the ANN constituted a program for a computer, but also that the contribution made by the program (namely improved file recommendations based on ‘semantic’ or ‘aesthetic’ qualities) was not a technical one so as to take it outside the scope of the computer program exclusion.

This to-ing and fro-ing led to a significant degree of uncertainty. We have previously commented here, for example, on the Intellectual Property Office’s guidelines for examining patent applications relating to artificial intelligence, which have already had to be re-written twice in response to the various court rulings.

Clarity, therefore, was sought from the Supreme Court.

The Supreme Court stepped back to analyse how the lower courts had reached their respective decisions on the application of Article 52 EPC.

In each case, the courts below had applied the following four-step test approach to the application of Article 52(2) as set out by the Court of Appeal in Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371 (‘Aerotel’):

1. Properly construe the claim;
2. Identify the actual contribution;
3. Ask whether it falls solely within the excluded subject matter; and
4. Check whether the actual or alleged contribution is actually technical in nature.

As the Court points out, the lower courts had all applied Aerotel without any suggestion that this was not the appropriate thing to do.

However, in a significant break from the practice of the past two decades, the Court concluded that Aerotel should no longer be followed. It explained that the approach taken by the Court of Appeal in Aerotel has been “emphatically rejected as a means of applying Article 52(2) and 52(3)”, citing the decision of the Enlarged Board of the European Patent Office (EPO) in G1/19.

While the Supreme Court pointed out that English courts are not bound by decisions of the Boards of Appeal of the EPO, even of the Enlarged Board, they should nonetheless respect and follow those decisions unless they are “convinced that they are wrong or beyond the ambit of reasonable difference of opinion”.

In this case, the Supreme Court held that there was “real force” in the Enlarged Board’s criticism of the Aerotel approach, explaining that the term ‘invention’ as used in the EPC had been misunderstood as if it had to be novel or involve an inventive step. As the Court put it: “considerations of novelty and inventive step… are separate and independent requirements of patentability within the scheme of the EPC from the requirement of an “invention” which is the subject of Article 52(2)… The Aerotel approach at best jumbles up the test of an invention with the other requirements for patentability (if indeed it mentions that first question at all) and reverses the logical order of analysis by starting with contribution to the known art (step 2), then addressing the Article 52(2) exclusions (step 3), and then finally going back at step 4 to the “technical in nature” question, which is really an aspect of Article 52(1)”.

In place of the Aerotel, the Supreme Court endorsed the approach in G1/19 which it said “squarely address[es] the question whether the claim amounts to an “invention”, uncluttered with any assessment of contribution, novelty or inventive step. It construes that term in light of the basic requirement that patents are to be extended only to that which is technical, as enshrined generally in Article 52(1) and treating Article 52(2) as providing a non-exhaustive list of examples of matters which are non-technical”.

In practice, this means that any analysis of Article 52 will now proceed in line with EPC jurisprudence, which adopts a so-called “any hardware” approach, under which the presence of physical hardware, however mundane, will generally be sufficient to prevent the claim from being excluded at the outset.

The Court accepted that this imposes a “low hurdle”, but that the effect of the guidance in G1/19 is that once that hurdle has been overcome, the next stage is to undertake what the Enlarged Board described as an “intermediate step between assessing (i) the invention’s eligibility under Art 52, and (ii) whether the invention is based on an inventive step vis-à-vis the closest prior art. This additional intermediate step serves as a filter for features contributing to a technical solution of a technical problem in view of the closest prior art. Only those distinguishing features can contribute to inventive step”.

While the Court’s rejection of Aerotel represents a significant shift in the treatment of patent applications for computer-implemented inventions, the question of the patentability of the ANN itself remained unresolved.

On whether the ANN was a program for a computer, the Court held that it was, stating that “the ANN constitutes, in essence, a set of instructions to manipulate data in a particular way so as to produce a desired result. In other words, an ANN is a program for a computer”.

However, as to whether the invention was excluded under Article 52, that required the matter to be considered afresh, under the new post-Aerotel approach. This was something that the Court was not prepared to do itself, explaining that “there are rare occasions when a new question arising for the first time in this court but not addressed in the parties’ written cases can be tackled, usually with the help of further written submissions and exceptionally by a further hearing. We do not consider that this case is one of them. This appeal raises issues of fundamental importance for the UK’s application of the EPC to computer-implemented claims, particularly in the rapidly expanding field of AI. It would be unwise for us to embark on carrying out the analysis required by the intermediate step – and in doing so to create binding precedent – without the benefit of both in-depth legal argument and the views of the UKIPO and the specialist judges in the lower courts, none of which are available to us”.

Accordingly, the appeal was allowed and the questions of how the ‘intermediate step’ applies to the claimed invention and, following that, whether the features contributing to its technical character involve an inventive step, were remitted to the Hearing Officer for determination.

To read the judgment in full, click here.