On 21 November 2023, the UK High Court handed down its judgement in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs, and Trade Marks, which considered the application of the computer programs exclusion to the patentability of an AI invention.
This was the first judicial decision in the UK to consider such an issue and may represent a turning point in ruling against the UK Intellectual Property Office’s (UKIPO) decision to exclude the AI system from patentability on the basis that the AI fell within the computer programs exclusion and that it had not produced a substantial technical contribution.
The Patent Application
The invention which Emotional Perception AI Ltd sought to patent relates to an improved system for recommending data files, such as music, to an end user. Rather than only suggesting comparable files included in the same defined category, like genre, the invention’s purported advantage would be to suggest semantically similar tracks based on human emotion and perception.
This is done by passing the file through an artificial neural network (ANN) which is trained to identify another file based on, for example, its emotional and musical similarities. The recommendation is then communicated to the user by sending them a message along with the file.
The UKIPO Decision
The UKIPO refused the application on the basis that it fell within excluded subject matter under section 1(2)(c) of the Patents Act 1977, as "a program for a computer ... as such". It was also suggested that providing a semantically similar file recommendation did not constitute any technical contribution beyond the running of a computer program.
The High Court Decision
In Emotional Perception AI Ltd’s appeal of the UKIPO decision, the High Court considered two fundamental questions:
- Was the invention a computer program?
- If yes, was there a technical contribution beyond being a computer program?
The judge accepted that a computer program was used to teach the ANN how to identify semantically similar files. However, he distinguished this use of the computer program from the invention itself, in that the computer program was present during the training stage of the ANN and constituted a subsidiary part of the invention.
The invention went beyond this use, and therefore, it was held that the invention did not in itself constitute a computer program. The judge’s reasoning included that an ANN is not a computer program because “it is not implementing code given to it by a human” and is “operating at a different level (albeit metaphorically) from the underlying software on the computer, and it is operating in the same way as the hardware ANN”.
If the answer to the first question had been affirmative, it would have been necessary to consider whether there was a computer program “as such” in making a technical contribution outside of itself. Despite concluding that the invention did not fall within excluded subject matter, the judge went on to consider this question nonetheless.
Interestingly, it was held that there was a technical contribution, due to the ANN’s method and purpose of analysis and selection through the application of “technical criteria which the system has worked out for itself”, that would have meant that it was patentable even if it was determined to be a computer program.
In overruling the approach taken by the UKIPO to consider the patentability of computer-implemented inventions, the judgement was unexpected and went against current practice and conventional understanding. This decision is the first of its kind in in the UK and is significant in potentially paving the way for a new approach to assessing the computer programs exclusion as it relates to AI inventions. The judgement holds relevance to many AI systems, as it relates to the way ANNs are trained and used.
In response, the UKIPO has temporarily suspended its guidelines to examiners on AI inventions while it considers the judgment. It has also issued a practice update that provides information on changes to the UKIPO’s practice on the examination of inventions involving ANNs.
On 15 December 2023, the UKIPO confirmed that they had been given permission to appeal the decision to the Court of Appeal. It will be interesting to see if the Court of Appeal agrees with the High Court about the relevance, if any, of the distinction between the human programmed hardware of the ANN and how the ANN operates it.
By confirming that ANNs, and AI-related innovations, can be patented, the judgement is certainly a positive step for those involved in AI and for promoting the UK as an AI and technology leader. Although the decision of the Court of Appeal is awaited with interest, on the face of it, the judgement may indicate the dawning of new era of openness to AI-related innovation.
This article was co-written by Paralegal Catherine Templeton.