UKIPO Publishes New Guidance On The Examination Of UK Patent Applications Following Emotional Perception

The Supreme Court’s decision in Emotional Perception in February 2026 brought about an immediate change to the way the Patents Act 1977 (PA) should be applied by the patent examiners at the UKIPO. This involves a fundamental shift in the interpretation of patentability under s.1 PA. See our blog post on the Supreme Court (SC) decision here.

The SC held that the requirement that a claim discloses an “invention” must be considered first, ahead of the requirements for novelty, inventive step, and industrial application. Only when the requirement for an “invention” is satisfied do the other requirements for patentability become relevant.

In consequence, the UKIPO has issued an amended practice notice Search and Examination of UK Patent Applications under the Patents Act 1977 (as amended) (Notice) which sets out what will be interpreted as “non-inventions”, these being things that are abstracted or of non-technical character. An invention must have technical character. Anything with technical character is not excluded under the Patents Act 1977’s list of exclusions from patentability (s. 1(2)), even if it is related to non-technical elements (since these are only excluded “as such”).

The SC decision introduced an intermediate step which is an assessment establishing whether a feature contributes to the technical character of the invention. It is the process for assessment of this intermediate step that the UKIPO has had to establish for itself, the SC having left the detail of its implementation to the IPO, stating: "How [this approach to inventive step] applies to this invention, and whether the features of the invention which contribute to its technical character can be considered to involve an inventive step, are questions to be considered by the Hearing Officer."

The principles to be applied under the new UKIPO guidance, are based on the SC’s judgment which in turn referred to the EPO’s practice in its rejection of the previous UKIPO practice (which had itself been based on the Court of Appeal’s decision in Aerotel [2006] EWCA Civ 1371) which had been in place for the intervening twenty years.

The UKIPO’s resultant Notice was published on 14 July 2026, and implements the SC’s judgment explaining where examiners should apply the intermediate step filter within the UK’s existing inventive-step analysis.

Our commentary on the SC decision for AIPPI earlier this year set out two possible options for the UKIPO to implement the decision, the second of which has been applied in this Notice.

 UKIPO Practice Notice 

On 14 July 2026, the UKIPO published a on how UK patent applications should be searched and examined following the Supreme Court’s (SC) decision in Emotional Perception AI Ltd v Comptroller General of Patents [2026] UKSC 3 in February 2026. The Notice attempts to translate the SC’s judgment into examination practice. The SC did not dictate the specific approach that the IPO should take but sought to rely on the IPO’s experience of process and procedure to allow it to implement the SC’s point of principle. The main area left for the IPO was how to implement the intermediate-step filter into the UK’s established Pozzoli approach to inventive step.

In broad terms, under the established Pozzoli approach, the examiner identifies the inventive concept, compares it with the prior art and asks whether the differences would have been obvious. Following Emotional Perception, that inventive step analysis requires an additional filtering exercise: features that do not contribute to the technical character of the invention cannot support an inventive step. The Supreme Court did not, however, decide in Emotional Perception how that exercise should be incorporated into Pozzoli.

In our commentary on the SC’s decision for the AIPPI, we considered two possible approaches:

•  applying the filter to the inventive concept before comparing it with the prior art, so that only the resulting “filtered” concept is used to identify the differences relevant to the assessment of obviousness; or
• identifying the differences from the prior art in the usual way, and then filtering those differences before assessing obviousness. 

For examination purposes, the UKIPO has adopted the latter approach. Examiners will:

1. identify the inventive concept in the usual way, in accordance with Pozzoli step 2;
2. identify the differences between that concept and the prior art in accordance with Pozzoli step 3; and
3. before assessing obviousness, determine which of those differences contribute to the technical character of the invention, considered as a whole.

Differences that make no such contribution cannot support an inventive step. Any differences that do contribute are then assessed for obviousness in the usual way under Pozzoli step 4 (Notice, paras 59 - 60). 

The Notice also has two immediate practical consequences:

• where the UKIPO has previously raised an excluded-matter objection under Aerotel, the applicant’s response to that objection will prompt the examiner to reconsider the requirements for patentability afresh under Emotional Perception and the Notice (Notice, para 48); and 
• the intermediate step will also inform the search for prior art. Search examiners must identify the features contributing to the technical character of the claimed subject matter and ensure that the search covers those features (Notice, para 62). How an application explains its technical character may therefore affect the search itself, making this a drafting issue as well as a prosecution issue.

The Notice establishes the approach applicants will face before the UKIPO, but it does not settle the law conclusively. It binds examiners, not judges, and recognises that existing authority on novelty and inventive step continues to apply “unless and until UK courts say otherwise” (Notice, para 32). Whether this is the correct integration of the intermediate step with Pozzoli may ultimately be tested in the courts.

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.