In the potentially ground-breaking decision on Emotional
Perception delivered late last year, the High Court found that a
claim relating to a trained artificial neural network (ANN) did not
fall foul of the recognised non-patentable subject matter exclusion
for being a “computer program as such“. However,
the UK Intellectual Property Office (IPO) is now appealing the
decision to the Supreme Court. Whatever the final verdict on
Emotional Perception’s case, the rationale adopted by the Court
looks set to have a lasting impact on the patentability of AI in
the UK.
WHERE ARE WE TODAY WITH THE PATENTABILITY OF AI IN THE UK?
In recent years, the UK IPO, recognising the increasing
importance to UK industry of providing up-to-date guidance and
improved legal certainty for tech innovators, has made a concerted
effort to clarify its stance on the patentability of artificial
intelligence (AI) and computer-implemented inventions (CIIs).
To this end, in 2020, the IPO published a call for the views of
technical experts and IP professionals on AI patentability. Shortly
afterwards, it committed to releasing enhanced guidelines on the UK
examination of patent applications relating to AI inventions, and
in September 2022 published the fruits of its labours.
Although not a departure from established UK practice, the
guidelines laid out illustrative examples of both patentable and
non-patentable AI inventions, across a range of use cases. At the
very least, the update formed a useful heuristic for AI
patentability, clarifying which aspects of AI technology the IPO
viewed as protectable and providing pointers as to the direction of
travel of the IPO’s attitude towards AI innovation.
The guidelines also echoed the accepted UK position at the time
that ANNs, unless limited to being implemented in hardware, were to
be considered computer programs vulnerable to the
“computer programs as such” exclusion under
Section 1(2) of the Patents Act. Successfully establishing ANN
patentability therefore required passing the so-called
Aerotel test, the crux of which often involves
demonstrating that a technical effect is brought about outside of
the computer in question.
Much of this long-awaited guidance has since been rendered
moot.
At the time of writing, the AI guidelines have been entirely
removed from the government website, undermined by a landmark
judgement in Emotional Perception AI Ltd v Comptroller-General
of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch),
handed down by the High Court at the end of November last year.
WILL EMOTIONAL PERCEPTION HERALD A NEW APPROACH TO THE
PATENTABILITY OF AI IN THE UK?
The Appeal reconsidered the IPO’s first instance decision to
refuse patent application GB 2583455, which claimed a system using
an artificial neural network (ANN) to provide improved media file
recommendations to a user based on language descriptor similarities
– think Spotify radio, or the almighty TikTok algorithm.
The outcome of the Appeal hinged on establishing:
(i) which component(s) of the invention constituted a computer,
and
(ii) which component(s) constituted the program at risk to the
IPO’s “computer program as such“
exclusion.
These questions, in Judge Sir Anthony Mann’s view, had not
been properly considered in the initial proceedings. The resulting
discussion subjected the IPO’s position to new scrutiny and
revealed what the Judge considered to be significant blind spots in
the IPO’s framework for assessing ANN inventions.
In coming to his final decision, Sir Mann weighed in on several
issues which could set important precedents for the future
examination of cases relating to ANNs, and perhaps in some
instances AI and CII more generally. His findings are summarised
below.
What is a “computer” in the context of an
ANN?
For something (e.g., a hardware ANN) to be defined as a computer
in the legal sense, it is not necessary that it runs things called
“programs“. It is sufficient that it performs
functions and activities typical of computing devices, such as
information storage, manipulation, communication, device control,
complex calculation, or data processing.
How is this assessment different for hardware vs.
emulated ANNs?
If a hardware ANN is found not to run a program because it
doesn’t execute instructions created by a human but only
applies its own weights and biases, then the same reasoning should
save an emulated ANN – which functions analogously – from being
excluded.
What is a “computer
program” in the context of an
ANN?
In the assessment of ANN patentability, the “computer
program” under scrutiny should be the program which
achieves or initiates the ANN training, not the resulting
trained ANN.
A claim to ANN training may nonetheless be more than a
“computer program” provided that the claim is to
more than the training process itself. This is the case if the
claim includes activities which are not necessarily a part of the
program, such as the idea of particular parametrisation, or of
pairwise input file selection.
Establishing a technical effect outside the
computer: when can a computer program be deemed more than a
“computer program…as
such“?
Even where a claim to either a trained ANN or the ANN training
itself is considered a claim to a “computer
program“, a technical contribution can still save the
claim from being deemed a program “as such“,
this semantic distinction being a particular quirk of the relevant
patentability test in the UK.
When assessing whether a trained ANN makes a technical
contribution, if the ANN selects, identifies, moves, transmits, or
produces files based on criteria, then it may be considered
technical even if the criteria itself cannot be described in purely
technical terms (e.g., where the criteria is qualitative or
semantic). For example, output by the ANN of a file, based on
semantic criteria, which would otherwise not have been selected is
considered a technical effect outside a computer for the purposes
of the UK’s Aerotel test for patentability.
In establishing whether the training of an ANN brings about a
technical effect in the form of a trained ANN, the specific
function of every node need not be defined as long as the ANN as a
whole is identifiable by reference to the training it has
received.
WHAT IS THE OUTLOOK FOR AI PATENT APPLICATIONS AT THE UK
IPO?
Sir Mann’s conclusion on the final issue regarding semantic
selection criteria is a particularly notable one, as it appears to
depart from the established UK position that selecting by semantic
criteria alone is insufficient to provide a technical effect under
the Aerotel test. This also raises the issue as to whether
the IPO’s view on the patentability of ANNs, and computer
programs more generally, will remain in harmony with that of the
European Patent Office (EPO).
The EPO currently considers the use of semantic parameters to be
non-technical, and semantic considerations are deemed incapable of
contributing to an inventive step unless the parameters
interact with other technical features in some way to solve a
technical problem.
For the EPO to have reached the same positive conclusion as the
IPO via their alternative “problem-solution” approach, it
would need to have been satisfied that selecting the file based on
semantic parameters helps address a technical problem. In reality,
European examiners are rarely persuaded by problem-solution type
arguments which rely on carrying out an action – such as selecting
a file – merely because it is qualitatively preferred or
“better” to do so.
In view of the possibility of a future broadening in CII
patentability at the IPO compared with that of the EPO, prospective
European applicants will have to carefully consider, with the
advice of their patent attorneys, whether to also include a direct
UK national application as part of a European filing strategy.
Shortly after the decision was handed down, the IPO issued
statutory guidance informing the public that the IPO “is
making an immediate change to practice for the examination of ANNs
for excluded subject matter“, and that UK examiners will,
at least for the time being, “not object to inventions
involving an ANN under the “program for a computer”
exclusion of section 1(2)(c).“
It remains to be seen how liberally, and for how long, the
derogation will be applied by UK examiners. AI innovators and legal
professionals alike will be keeping a watchful eye out for the
update promised in the guidance. The court date for the IPO’s
appeal of the decision has been fixed for 14 May 2024.
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