Posted on July 22, 2024
The Court of Appeal has now handed down its judgement in the Emotional Perception case (Comptroller-General of Patents, Designs & Trade Marks (appellant) v Emotional Perception AI Ltd (respondent)).
The judgement may have significant implications for patenting AI inventions in the UK.
The invention in question uses an artificial neural network (ANN) to provide semantically-relevant media file recommendations to end users.
Initially, the UK Intellectual Property Office (UKIPO) considered the invention to be excluded from patentability as “a program for a computer … as such”, and refused the patent application. The High Court disagreed, however, and (somewhat surprisingly) held that an invention involving an ANN is not a computer program as such, regardless of whether the ANN is implemented in software or hardware. This decision, of course, made it potentially easier to patent ANN-based inventions in the UK than had previously been the case, since they would no longer trigger the “program for a computer” patentability exclusion.
However, the Court of Appeal has now overturned the High Court’s decision, and agreed with the UKIPO that the patent application should be refused.
Crucially, the Court of Appeal has held that ANN-based inventions do engage the “program for a computer” exclusion.
The decision states that an ANN is “clearly a computer – it is a machine for processing information”. It also finds that the weights of an ANN “are a computer program. They are a set of instructions for a computer to do something. For a given machine, a different set of weights will cause the machine to process information in a different way.” This is the case whether hardware or software is used: “Nor is there any difference for this purpose between a hardware ANN and a software ANN. However it is implemented, the weights (by which I mean weights and biases) of the ANN are a program for a computer and therefore within the purview of the exclusion.”
The Court of Appeal then found that, beyond being an ANN (and so a computer program), Emotional Perception’s invention was merely providing recommendations of files to users, which is not a technical thing to do, because the beneficial effect is subjective and cognitive. Consequently, the invention was found to be excluded from patentability.
It therefore appears that the UK’s approach to patenting inventions involving ANNs will no longer be as patentee-friendly as it was following the decision of the High Court.
It should be emphasised, however, that just because an ANN-implemented invention does engage the “program for a computer” exclusion, that does not mean it is necessarily unpatentable. As the Court of Appeal’s decision states: “Very many computer implemented inventions are outside the exclusion and are patentable as a result … Each of these would have been just as patentable if the computer involved had been or used an ANN. The fact the exclusion is engaged … simply means that ANN implemented inventions are in no better and no worse position than other computer implemented inventions.”
Accordingly, like other computer-implemented inventions, ANN-implemented inventions have to be shown to provide a further technical effect in order to escape the subject-matter exclusion, beyond the usual technical effects that arise simply due to a computer being used. An ANN that controls an x-ray machine or designs drill bits may be found to be outside the exclusion (and therefore potentially patentable), because controlling x-ray machines and designing drill bits are considered to be inherently technical activities. In contrast, an ANN implementing a financial trading system would likely fall within the exclusion (and therefore not be patentable), because financial trading is not considered to be a technical activity.
Another, potentially noteworthy, aspect of the decision concerns the training of an ANN. In Emotional Perception’s invention, how the ANN has been trained is a key part of the invention, and is recited in the claims. However, the decision considers “the training activity, which is set out in the claim, as subsidiary in nature and irrelevant. In saying that I do not mean to downplay the importance overall of the "trick", the pairwise comparison technique which is used in the training phase to produce a useful system. It is clearly part of the contribution. However for the purpose of analysing the patentability of either claim, the training aspect makes no difference. The training is, in effect, part of the creation of the program.”
The decision, then, seems to suggest that while training features might provide an important contribution, they are irrelevant for the purpose of determining whether the invention constitutes excluded subject-matter, even when the training features are specifically recited in the claims. If so, this is somewhat surprising: one can imagine scenarios where how the ANN has been trained provides a further technical effect which could bring the claimed invention outside of the exclusion, if only it were taken into account. Indeed, it might be argued that this is the case for Emotional Perception’s invention, and it is not entirely clear from the decision on what basis the training features were ignored.
Of course, this may not be the end of the story. It remains to be seen whether Emotional Perception will appeal, so that the Supreme Court can have the final say.
Summary:
The Court of Appeal’s decision in the Emotional Perception case has now been issued, overturning the High Court’s previous decision and refusing Emotional Perception’s patent application, on the basis that their invention is excluded from patentability as “a program for a computer … as such”. However, the decision makes clear that ANN-implemented inventions may still be patentable, but that they are subject to the same considerations as other inventions involving computer programs. We now wait to see if there is a further appeal to the Supreme Court.
Speak to Alex Crick or Tom Burt, or contact one of our patent attorneys if you are interested in seeking patent protection in the UK for an AI-related invention.
