In this article, we explore the key changes to the guidelines for examining patent applications relating to artificial intelligence (AI) following the Court of Appeal decision in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2024] EWCA Civ 825.
Yesterday, the UK Intellectual Property Office (UKIPO) issued an update to the guidelines for examining patent applications relating to artificial intelligence (AI) following the Court of Appeal decision in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2024] EWCA Civ 825. As a reminder, the Court of Appeal overturned an earlier decision from the High Court that found the Emotional Perception artificial neural network (ANN) invention to be patentable.
The changes to the guidelines are intended to bring the guidelines into conformity with the current state of the law. Of course, the UK Supreme Court has granted Emotional Perception permission to appeal against the negative UK Court of Appeal decision which drove the update to the guidelines, so the updated guidelines may themselves be superseded in the near future.
Key amendments to the guidelines
The revised guidelines incorporate substantive changes in sections 4.4 to 4.7, 4.23 to 4.28, 5.12, 5.33 to 5.37, 7 to 7.10, 8.5, and 8.6. The amendments are intended to provide clarity on the threshold for demonstrating a technical contribution beyond the mere implementation of an abstract idea in software.
The ruling in Emotional Perception reaffirmed that ANNs and machine-learning models, when applied to recommendation systems and similar applications, fall within the exclusion of computer programs "as such" under the UK Patents Act 1977. Consequently, scenarios 13 to 15 in the guidelines have been revised to explicitly confirm these types of inventions as excluded subject matter. Scenarios 16 and 17 have also been modified to reflect the refined test for patentability established by the Court of Appeal.
Impact on AI patent applications
The key impact of the modifications is intended to be that, as stated in section 4.27 of the guidelines in a direct quote from the Court of Appeal decision, ANN inventions "are in no better and no worse position than other computer implemented inventions". Essentially, no special consideration is to be afforded to AI (specifically ANN) implemented inventions beyond that given to inventions implemented using standard computer programming techniques.
The updates are largely as would be expected based on the Court of Appeal decision, reinforcing the importance of demonstrating a technical contribution beyond conventional computational processes when seeking to protect an AI-related invention.
So, what's next?
Following these updates, applicants seeking protection for AI and software-related inventions should carefully evaluate how their inventions provide a concrete technical contribution beyond software execution. The updates largely mandate a return to the strict UKIPO stance on AI-implemented inventions as followed prior to the original Emotional Perception High Court decision that found the Emotional Perception artificial neural networks (ANNs) invention to be patentable. It remains to be seen if the updates are permanent or if there is still a chance for ANNs to be seen as inherently patentable by the UK's top court.
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