The Supreme Court has this morning issued a press release announcing its decision in the case of ‘Emotional Perception AI Limited (Appellant) v Comptroller General of Patents, Designs and Trade Marks (Respondent)’. A copy of the judgement can be found here.
In brief, the Supreme Court has allowed the appeal and decided:
- UK courts should no longer follow the four-step test set out in Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371 (often referred to as the ‘Aerotel test’) for assessing whether an invention, particularly for software and business methods, is excluded from patentability.
- UK courts should, instead, follow the ‘any hardware’ approach endorsed by the Enlarged Boards of Appeal of the European Patent Office (EPO) (decision G 1/19), whereby any hardware element in a claim will convey technical character and avoid the exclusions.
- UK Courts should also follow the EPO’s approach to assessing claims directed to a mixture of technical and non-technical subject matter endorsed by G 1/19; that is, once the “very low hurdle” of satisfying the any hardware approach is met, the next ‘intermediate’ step is to filter out features that do not contribute to the technical character of the invention, viewed as a whole, from subsequent consideration during assessment of inventive step.
- The Court of Appeal’s description of a computer as “a machine which processes information” is too broad, but in light of changing technologies no strict definition is appropriate.
- A program for a computer is “a set of instructions capable of being followed by a computer (of any kind) – which may or may not have a CPU – to produce desired manipulations of data”.
- An artificial neural network (ANN), regardless of how it is implemented, is not itself ‘computer’. However, applying the ‘any hardware’ approach to this case, although the claims of the patent application involve an ANN, they involve technical means and are therefore not excluded for being a computer program as such.
The UK Supreme Court’s adoption of the EPO’s any hardware approach and intermediate step of filtering out non-technical features moves UK and EPO practice closer together. Concerns were raised by the Comptroller that these changes would interfere with the UK’s long-settled approach to assessing inventive step as set out in Pozzoli v BDMO SA [2007] EWCA Civ 588 (often referred to as the ‘Pozzoli test’), in effect requiring the UK to also adopt the EPO’s ‘problem-solution’ approach to assessing obviousness. However, the Supreme Court dismissed these concerns, holding that the problem-solution approach is not the only way of assessing inventive step and that the Pozzoli test “remains a legitimate approach”.
In practice, since almost all software inventions are computer-implemented, the ‘any hardware’ test can be easily met and the assessment of technical character now becomes part of the assessment of inventive step rather than excluded subject matter; UK applications that may have struggled at the excluded subject matter stage might still struggle at the inventive step stage. How in practice the newly adopted ‘intermediate step’ is applied (e.g. how technical character is assessed and how old case law applies) and impacts assessment of obviousness at the UKIPO remains to be seen.
