Published December 12, 2023

A recent judgment of the High Court of England and Wales has opened the door for patenting artificial intelligence (AI) in the United Kingdom.

The judgment in Emotional Perception AI Ltd v. Comptroller-General of Patents, Designs, and Trade Marks [2023] EWHC 2948 (Ch) is the first time in over a decade that the High Court has overturned a decision of the UK Intellectual Property Office (UKIPO) to refuse an application on the grounds of patent ineligibility.

The invention at issue in this case was an artificial neural network that recommended video, audio, image, or text files. This sort of technology is commonly used to recommend new music to a user of Spotify or Apple Music based on music they have listened to previously.  

At the first instance, the UKIPO refused Emotional Perception’s patent application on the grounds that it related to a program for a computer and was, therefore, excluded from patentability under Section 1(2) of the Patents Act. When refusing the application, the UKIPO’s Hearing Officer found that recommending content was “of a subjective and cognitive nature,” rather than a technical effect that might render the invention patentable.

On appeal, the High Court disagreed with the UKIPO’s finding that an artificial neural network (ANN) was a computer program. The judge found that – unlike a computer program – the ANN was not implementing code given to it by a human, but was instead operating according to something that the ANN had learned itself. In his view, the ANN was “operating at a different level from the underlying software on the computer,” so was not a computer program.

The judge also disagreed with the Hearing Officer’s finding that recommending content is not a technical effect, saying the content “is not just any old file; it is a file identified as being semantically similar by the application of technical criteria which the system has worked out for itself.”  

The UKIPO quickly updated its examination practice to take account of the High Court’s judgment. In a practice note, the UKIPO announced that it will no longer object that inventions involving ANNs are excluded from patentability on the grounds that they relate to programs for a computer. This is a significant departure from the UKIPO’s previous practice of treating ANNs like any other computer-implemented invention, which commonly resulted in the refusal of patent applications for groundbreaking and commercially important AI technologies.

The High Court’s judgment and the UKIPO’s new practice contrast with the established practice of the European Patent Office (EPO) for examining AI-related inventions. According to the EPO, ANNs and similar technologies are regarded as “mathematical methods” that do not, in themselves, have a technical effect. 

Although the judge chose not to consider whether Emotional Perception’s invention was excluded from patentability for being a mathematical method, his finding that recommending content is a technical effect would in any case have caused the invention to escape the exclusion.

The High Court’s judgment is also at odds with the EPO’s practice for examining inventions relating to content recommendation systems. In decision T 306/10, the EPO’s Board of Appeal held that a recommendation system lacked a technical effect, finding “from a technical point of view it is irrelevant what songs are recommended to a user.” That decision was cited during the prosecution of Emotional Perception’s corresponding European patent application (EP3931721), which is still being examined by the EPO. The UKIPO and EPO may ultimately reach different conclusions on the patentability of the same invention, even though both patent offices are supposed to apply essentially the same law.

Although it remains to be seen how individual examiners will apply the UKIPO’s new practice, on the face of it the UK is now a more favorable forum than the EPO for obtaining patents for inventions involving AI and machine learning. This will surely be welcomed by innovators in the field of AI, who have long bemoaned the difficulty of obtaining patents at the UKIPO and EPO alike. Whilst those innovators would once have avoided filing patent applications at the UKIPO, we might now see the UKIPO become the patent office of choice where AI-related inventions are concerned. 

Philip Cupitt

Written by Philip Cupitt

Partner, Marks & Clerk 

Marks & Clerk

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