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The UK IPO’s updated guidance should reduce Section 1(2) objections, but applicants may still face difficult questions about which claim features make a technical contribution
On July 14th, the UK IPO published updated statutory guidance on Search and Examination of UK Patent Applications under the Patents Act 1977 following the UK Supreme Court decision on Emotional Perception AI v Comptroller.
The guidance is a welcome clarification and should make UK practice look more familiar to those used to the EPO’s two-hurdle approach. However, its practical effect may be more limited than first appears, because the usefulness of search and examination may still depend heavily on which claim features are first treated as contributing to technical character. This has potential ramifications not only for artificial neural networks and AI inventions, but also for software inventions more generally.
The guidance, in its first part, summarises the salient points from the decision, which we have already covered in our article discussing the decision. The focus of this article is on the second part of the guidance, which stipulates how examiners should apply the judgment in practice. That second part is important because the Supreme Court did not completely prescribe how the new test for patent eligibility, in particular the intermediate step, should be implemented.
What has changed?
As widely reported, the UK IPO’s Aerotel test for assessing patent eligibility under Section 1(2) of the Patents Act 1977 has been replaced with a new three-step approach. The guidance sets out the new three-step approach in its entirety.
i. the “first hurdle” – decide whether the subject matter of the claim qualifies as an invention, by applying the “any hardware” approach;
ii. the “intermediate step” – identify the features of the claim which contribute to the technical character of the invention, viewed as a whole; and
iii. the “second hurdle” – assess whether the invention is new, then whether it involves an inventive step in relation to the prior art by considering only those features which do so contribute to technical character.
This has echoes of the EPO two-hurdle approach – in that approach there is the same first hurdle as (i) above, but the EPO approach handles step (ii) and (iii) together in its second hurdle, in particular using the COMVIK approach. Of course, the COMVIK approach is based on the problem-solution approach for inventive step, which is not used in the UK, and therefore some adjustments had to be made to account for this.
A notable feature of the UK’s new three-step approach is the point at which novelty appears in the analysis. At the EPO, practice is not entirely settled and can vary by examining division. Sometimes novelty is assessed after determining which features contribute to the technical character of the invention, and sometimes it is assessed before. The COMVIK approach allows for both possibilities. Step 1 of COMVIK involves identifying which features contribute to technical character on the basis of the technical effects achieved in the context of the invention, without considering the prior art. Step 3 then considers, once the differences from the closest prior art have been identified, the technical effects of those differences in the context of the claim as a whole. In practice, because determining technical character at step 1 can be complex, the EPO guidance allows examiners to carry out step 1 on a first-glance basis only, with a more detailed analysis at the beginning of step 3.
On its face, the UK IPO has chosen a different route by expressing novelty as part of step (iii). That suggests novelty is necessarily assessed after identifying which features contribute to the technical character of the invention. This may matter in practice because applicants often have more scope to challenge an examiner’s position by reference to the prior art than by arguing in the abstract about whether individual features are technical.
The first hurdle – familiar territory
The guidance directs examiners to apply the “any hardware” test to determine whether a claimed invention relates to an eligible “invention”. As a consequence, examiners should only raise an objection under Section 1(2) if a claimed invention does not involve any technical means at all. This reflects the EPO approach under Article 52(2) EPC and is consistent with what was expected following the Supreme Court judgment.
The intermediate step – the difficult question
It is stipulated in the guidance that examiners should perform a feature-by-feature analysis of the claim to assess whether each feature contributes to the technical character of the claim, viewed as a whole. A claim feature is technical if it contributes to, or interacts with, the technical subject matter of a claim for the technical solution of a technical problem. This step very much echoes step 1 of the COMVIK approach, especially as the assessment happens without regard to the prior art.
The guidance also refers expressly to Part G – Chapter 2, Section 3 of the EPO Guidelines in respect of technical character. It is therefore possible that the UK IPO and EPO approaches to technical character will continue to have meaningful common ground, as has often been the case in practice.
However, for search purposes, examiners are directed to search the claim features they consider to contribute to the technical character. This leaves open the possibility that, where an examiner takes a narrow view of technical character, a substantial part of the claim may not be searched. If that happens, applicants may not be in a much better position practically than under the previous Aerotel approach.
The second hurdle – consequences for novelty and inventive step
Examiners have been directed to follow the existing UK guidance on novelty and inventive step. In particular, the guidance states that examiners should continue to make a novelty objection where a single prior disclosure discloses, either explicitly or implicitly, all the features of a claim. Read together with the direction that only technical features need to be searched, this raises a practical question: will examiners focus their searches specifically on the features they regard as technical, or will they search the claim more completely?
For inventive step, the guidance states that, where the only differences between an inventive concept and the prior art make no contribution to the technical character of the invention, examiners should raise an objection to lack of inventive step. In effect, features characterised as non-technical during the intermediate step may then be disregarded for inventive step. This is not quite the same as the EPO’s COMVIK approach, where the technical effects of the distinguishing features are considered against the closest prior art at step 3. The UK approach appears to place greater weight on the earlier categorisation of features as technical or non-technical, rather than performing a secondary assessment of technicality vis-à-vis the prior art. This could mean different outcomes between the UK IPO and EPO, but whether these differences are positive or not is fact specific.
What does this mean for applicants?
The direction of travel is positive in some respects. The “any hardware” approach should make the first hurdle relatively straightforward for most software-implemented inventions, and applicants should see fewer objections framed purely under Section 1(2).
However, that does not necessarily mean that more applications will be found allowable. If the key question simply moves from excluded matter to whether particular claim features contribute to technical character, applicants may still face the same underlying difficulty in a different form.
The most significant practical uncertainty is the scope of search. We understand that the UK IPO has ended its practice of issuing letters indicating that no meaningful search is possible for software inventions. However, if searches are limited to features deemed technical, they may be less useful in cases where the examiner takes a narrow view of technical contribution. That could leave applicants arguing about technical and non-technical features, rather than engaging with more familiar prior art-based questions of novelty and inventive step. By contrast, in many EPO cases, search remains useful because technical contribution is generally assessed by reference to the effects of the distinguishing features over the prior art.
Our overall assessment is therefore that the new guidance is helpful, but is unlikely to transform allowability for software inventions in the UK. Applications that would previously have faced Aerotel objections may instead face inventive step objections supported by a limited search. For applicants, the practical focus is likely to remain on drafting and arguing claims in a way that clearly identifies the technical contribution made by the invention.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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