- within Intellectual Property topic(s)
More than 20 years late, the UK Supreme Court has today decided that the UK's approach to computer-implemented inventions is wrong and that instead the EPO approach, as set out in G1/19, should be followed. The Enlarged Board of Appeal in G1/19 endorsed the Comvik approach from 2002 whereby the presence of any technical feature in a claim takes the invention out of the statutory exclusions, but any non-technical features and aims of the invention cannot be taken into account for inventive step unless they combine with technical features to solve a technical problem. This will mean that currently pending UK applications with rejections based on the now rejected "Aerotel" approach will need to be re-examined.
Brief history of the proceedings
In April 2019, Mashtraxx Limited applied for a patent titled "Method of training a neural network to reflect emotional perception ...". This was subsequently assigned to Emotional Perception AI LTD (EPAI) and in June 2022 refused by the UK IPO for being directed to a computer program as such. The Hearing Officer followed the so-called "Aerotel" approach1 and considered the five signposts of AT&T/CVON2. This approach differs markedly from the EPO approach (even though the same substantive law applies) and involves determining what the contribution made by the invention is and whether that contribution is technical.
EPAI then appealed to the Patents Court and in November 2023 Sir Anthony Mann gave a judgement3 overturning the refusal on the basis that an artificial neural network is not a computer program, so that the exclusion of computer programs from patentability in Patents Act 1977 S1(2)(2) (corresponding to EPC Art 52(2)(c)) does not apply. This judgement was widely criticised, in part for being based on a narrow definition of "computer program".
The UK IPO4 then appealed to the Court of Appeal which, in a judgment authored by Lord Justice Birss, reinstated the refusal of the application. LJ Birss held that the coefficients (weights and biases) of an artificial neural network are a computer program, so the exclusion does apply, and the invention did not make a technical contribution over the prior art.
Emotional Perception's invention
Although the application in suit is titled "Method of training a neural network to reflect emotional perception and related system and method for categorizing and finding associated content", the claims at issue are directed to a system and a method "for providing semantically relevant file recommendations". In broad terms, the invention is a recommendation engine, using neural networks to map measurable properties of works to semantic descriptions of the works so that given one work the system can recommend other works that share "common traits reflective of emotional-perception". The applicant did not claim that there was any novelty in the nature or structure of the artificial neural networks used but did assert that pairwise comparison of a measured property and a semantic vector for work during the training phase was new and inventive.
The Supreme Court judgment
The judgment of the Supreme court is that the Aerotel approach should be abandoned and instead the UK IPO and courts should apply the approach laid down in EPO Enlarged Board of Appeal G1/19 to the interpretation of Article 52 EPC to the interpretation of corresponding Section 1 of the Patents Act 1977. This approach, which is often referred to as the "Comvik" approach, holds that any technical feature in a claim (e.g. that a method is carried out by a computer) means that the claim is not excluded but that non-technical features generally do not contribute to inventive step. Noting that the 20-year-old Aerotel decision was given when the EPO Enlarged Board of Appeal had not opined on this topic and the EPO case law then appeared not to be entirely consistent, the Supreme Court gave five reasons for its judgement:
- The Enlarged Board of Appeal, whose opinion must be respected if not obviously wrong, holds that the Aerotel approach is incompatible with the EPC
- G1/19 is not obviously wrong and therefore is to be followed
- The Aerotel approach is based on a misinterpretation of the term "invention" in the EPC
- The UK IPO's view that both approaches lead to the same result is not provable and in any event not a good reason for not following G1/19
- Following G1/19 doesn't conflict with the UK Supreme Court's approach to inventive step, set out in the Pozzoli5 decision
The Supreme Court then went on to say that an Artificial Neural Network (ANN) is a program for a computer, but the claim at issue is not a program for a computer as such because it includes hardware features. Therefore, Emotional Perception's appeal is allowed. The case however is remitted to the IPO for consideration of other issues, in particular, we believe, inventive step.
The full judgement is expected to include guidance on the application of G1/19 to related issues.
Implications for British patent practice and drafting
The immediate impact on practice in the UK is that cases which are still pending but have objections based on the Aerotel approach, including refusals to search, will need to be re-examined. Cases that have already been finally refused will not be reopened, but a UK patent application is often not finally terminated until some time after a final office action so it may be that there are some cases that can be revived.
It will likely take the UK IPO some while to update the Manual of Patent Practice (MOPP) so there may be a delay in examination of pending cases. Nevertheless, applicants can start to make submissions based on G1/19 and the extensive EPO caselaw on computer-implemented inventions. It is yet to be seen how UK examiners will address more subjective aspects of the Comvik approach – such as what features and aims are technical and whether a non-technical feature combines with technical features to have a technical effect – but there should be considerable harmonisation between the UK IPO and EPO in relation to computer-implemented inventions.
Implications for EPO & UPC practice
In principle this judgement has no bearing on either EPO or UPC practice. The national courts and patent offices of EPO member states often recognise and follow EPO caselaw, but the EPO Boards of Appeal rarely consider decisions of national courts, except on procedural points for which the EPC has no provisions. The UPC often follows EPO caselaw on patentability issues and less often decisions of national courts of the contracting member states, but rarely caselaw of non-member states. In the long run however, well-reasoned decisions of UK courts on this issue might start to have an influence on the EPO and UPC.
Emotional Perception's other applications
The wider family of related applications is quite complex, with applications in many jurisdictions and separate applications relating to methods of training the artificial neural network that is used in the recommendation system. A British patent was granted to the training method but has since lapsed. Five patents have been granted in the US, variously including claims directed to both the recommendation system and the training method, albeit using somewhat different terminology. A granted Japanese patent has claims to both the training method and the recommendation system. However, the EPO has objected to claims to both the training method and recommendation system on the grounds of lack of inventive step (disregarding features relating to semantic content as non-technical).Whilst at least some of the European applications appear to have been abandoned without being taken to a hearing or appeal, differing outcomes in Europe, Japan and the US illustrate the different approaches to computer-implemented inventions taken by different patent offices.
Footnotes
1 Aerotel Ltd v Telco Holdings Ltd and Macrossan's Application [2006] EWCA Civ 1371; [2007] RPC 7
2 AT&T Knowledge Venture/CVON Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat); [2009] FSR 19
3 https://www.bailii.org/ew/cases/EWHC/Ch/2023/2948.html
4 Formally the Comptroller – General of Patents, Designs and Trade Marks
5 Pozzoli SPA v BDMO SA
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