UK IPO Issues New Guidance On Computer-implemented Inventions

Earlier this year, the UK Supreme Court gave its judgment in Emotional Perception AI Limited v Comptroller General of Patents, Designs and Trade Marks. The judgment overturned the UK’s existing approach to excluded subject-matter and aligned the UK with the EPO’s two-hurdle approach. The two-hurdle approach involves first considering whether the claim relates to excluded subject-matter (which is avoided by the inclusion of any hardware feature, such as a computer), and then assessing whether the claim meets the requirements of novelty and inventive step by providing a technical solution to a problem. The UK IPO has now issued general guidance to examiners in a practice notice setting out how to apply the judgment in practice.

The most important section of the practice notice discusses the so-called “intermediate step”, which is performed between the first and second hurdles, and involves identifying the features that contribute to the technical character of the invention and so should be considered when assessing inventive step (the second hurdle). Although the Emotional Perception judgment held that the intermediate step must be carried out, little detail was provided regarding how that should be done. The practice notice states that examiners should identify the features that contribute to, or interact with, the technical subject matter of a claim to provide a technical solution to a technical problem. This is very similar to the Comvik approach used by the EPO, which first identifies the features that contribute to the technical character of the invention, and then considers whether these features are novel and inventive. However, there is a possible divergence with EPO practice which recognises that an invention may provide a technical solution to a non-technical problem.

The practice notice explicitly suggests that examiners may consult the relevant section of the EPO guidelines (G-2-3) when considering whether a claimed feature contributes to the technical character of the invention. The UK IPO therefore appears to be harmonising the UK IPO to the EPO approach to excluded subject-matter, making it more likely that both offices will have the same view regarding whether a feature is technical or not. Although the UK examiners are not bound to follow the EPO guidelines, it may nonetheless be beneficial to refer to the guidelines when arguing that a feature of a claim contributes to the technical character of an invention.

The practice notice also notes that any existing applications which have been objected to under the Aerotel approach should be reconsidered when the applicant responds to the pending objections. Any direct response to existing objections made under the Aerotel approach will no longer be relevant. Any response made to a pending objection should therefore simply note that the Aerotel approach is no longer to be applied and argue in favour of patentability under the new approach, rather than providing an in-depth response to the previous objections.

Not all aspects of the practice notice attempt to harmonise the UK to EPO practice. In line with the Emotional Perception judgment, the guidance regarding the second hurdle (novelty and inventive step) is to follow the existing UK approach to novelty, and to continue to assess inventive step using the Pozzoli approach, with no suggestion that the EPO’s problem and solution approach should be used. However, the consideration of inventive step will only take into account differences between the inventive concept of a claim and the prior art that contribute to the technical character of the invention.

The practice notice also instructs examiners that the term “computer program” should be interpreted broadly and covers any “set of instructions capable of being followed by a computer of any kind to produce desired manipulations of data”. This confirms that a trained artificial neural network (ANN) will be considered a computer program.

The Manual of Patent Practice (MOPP) will be updated in due course to reflect these changes.

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