The UK Court of Appeal (CoA) has overturned a previous Decision issued by the UK High Court in November 2023 in the case of Emotional Perception AI Limited vs Comptroller -General of Patents, Designs and Trade Marks. In its decision, the CoA concluded that AI is a computer implemented invention for the purposes of assessing patentability under UK Patent Law and therefore the test for whether an artificial neural network (ANN) invention falls within excluded subject matter is the same as the test as to whether a computer implemented invention falls within excluded subject matter.
A link to the full Court of Appeal Decision can be found here. The UK Court of Appeal’s Decision issued on 19th July 2024, following the Hearing that took place on 14-15 May 2024, will have a significant bearing on the extent to which AI inventions will be considered patentable in the UK.
History of AI patentability
The patent application in question is directed to an invention for a system for providing media file recommendations to a user, such as for example, for providing music recommendations to a user. The invention arrives at these suggestions by passing the media or music file through a trained ANN.
The Judge in the earlier UK High Court Decision ruled that ANNs are not computer programs and therefore the exclusion of patentability relating to computer programs could not apply to ANNs.
Court of Appeal Ruling on AI
However, the Appeal Court Judge ruled that no matter how an ANN is implemented, be it via hardware or software, such a machine is clearly a computer as it is a machine for processing information. The instructions (including weights or biases) allowing the ANNs to perform recommendations are therefore a set of instructions for a computer to do something. As such, ANNs should be given the same considerations as any other computer implemented invention when considering patentability of the same.
The Appeal Court Judge also went on to say that just because ANNs were considered a computer implemented inventions, this does not mean they were unpatentable. However, in the case of the patent application by Emotional Perception AI, the Appeal Court Judge concluded that what makes the recommend media file worth recommending are its semantic qualities. This is a matter of aesthetics what are subjective and cognitive in nature. They are not technical and do not turn the present invention into a system that produces a technical effect outside the excluded subject matter. The CoA therefore upheld the UKIPO’s Original Decision that Emotional Perception’s patent application fell within excluded subject matter and was not patentable.
Future Implications of AI patents
Therefore, in light of this latest Decision, the two cases that are normally cited in the consideration of assessing excluded subject matter; Aerotel Ltd v Telco Holdings Ltd [2007] RPC 7, and AT&T Knowledge Ventures v Comptroller [2009] EWHC343 (pat), should apply to the consideration of ANN inventions. The Court of Appeal sets out a four stage approach to the application of these exclusions as being:
- Properly construe the claim;
- Identify the actual contribution;
- Determine if the actual contribution falls solely within the excluded subject matter;
- Determine if the actual contribution is actually technical in nature.
It is possible that a further Appeal could be made by Emotional Perception to the Supreme Court but for the time being, ANNs will be considered to be computer implemented inventions and therefore subject to the same test for exclusions from patentability.
Please do not hesitate to contact us if you would like to discuss how this latest Decision might impact the protection of your technology.