UK Court of Appeal issues landmark ruling in Emotional Perception AI case

The dispute centres on a patent application by Emotional Perception AI for a system that recommends data files. The technology uses an artificial neural network (ANN) to, for example, organise music files in a different way than common search algorithms. The UK IPO had initially rejected the application in June 2022 on the basis that it constituted a “program for a computer”, and thus fell under an exclusion from patentability in accordance with the Patents Act 1977.

In November 2023 the UK High Court found that the exclusion did not apply in this case.

Judges issue guidance

In response to this ruling, the UK IPO suspended its guidelines on AI patents and lodged an appeal. Now the UK Court of Appeal has overturned the High Court ruling, declaring that the ANN technology – whether implemented as hardware or software – does in fact fall under the definition of a computer program and should therefore be treated as such.

The ruling emphasises that this does not mean ANN-implemented inventions are unpatentable, but that they are to be treated as any other computer-implemented invention. According to the judges, AI innovations must make a technical contribution in order to be patentable (case ID: CA-2024-000036).

Thus, the judges propose that examiners follow the four steps laid down in the decision Aerotel vs the UK Patent office of 2006. They are described as follows:

(1) Properly construe the claim
(2) Identify the actual contribution (although at the application stage this might have to be the alleged contribution)
(3) Ask whether it falls solely within the excluded matter
(4) If the third step has not covered it, check whether the actual or alleged contribution is actually technical.

The bench comprised judges Richard Arnold, Nicola Davis and presiding judge Colin Birss.

UK IPO updates guidelines

An IPO spokesperson says, “We welcome the decision of the court and the clarity it brings to the law in this area. Following the decision of the Court of Appeal we issued a new practice notice.”

According to the notice, patent examiners “should treat ANN-implemented inventions like any other computer-implemented invention for the purposes of section 1(2). Examiners should use the Aerotel approach to assess whether the claimed invention makes a contribution which is technical in nature”.

The UK government has suspended its existing guidance on the examination of patent applications relating to artificial intelligence on its website. “We will publish our revised examination guidance in due course,” says the spokesperson.

The Court of Appeal has denied leave to appeal. Nevertheless, according to JUVE Patent information, Emotional Perception AI plans to appeal the decision at the Supreme Court.

Long-standing counsel

As in the High Court proceedings, Emotional Perception AI relied on law firm Hepworth Browne and barristers from 8 New Square for the appeal. Hepworth Browne partner and patent attorney Bruce Dearling has represented the startup since its inception. He has worked on the technology in this case for five years and filed the patent.

Barrister Edmund Eustace from 8 New Square joined KC Mark Chacksfield in the appeal.

Anna Edwards-Stuart of 11 South Square represented the UK IPO as in the previous proceedings. She has served on the patent office’s advisory panel since 2019. Edwards-Stuart became King’s Counsel in 2023 and primarily has a reputation as an expert in pharmaceutical and biotechnology cases. Brian Nicholson, who has a technical background, provided assistance.