[GuestPost] The Court of Appeal’s latest AI decision begs the question – what inventions are deserving of patent protection?

“The recent case involving Emotional Perception, both in the High Court and the Court of Appeal, has divided opinions within the patent profession. Some have argued that the High Court decision provided a welcome change: an opportunity for the UK to lead the way in AI patents. Others called out the High Court decision as rogue and soon-to-be-overturned. Whatever your view, the Emotional Perception case does shine a spotlight on the borderlands of patentability, and forces us to re-examine where the dividing lines should be drawn. More generally, it has re-opened the debate on whether patent law remains fit for purpose in the modern age, especially when it applies to computer programs. Should we continue trying to stretch the Patents Act to deal with new technologies, or is it time for a legislative overhaul and a fresh look at what kind of inventions should be considered patentable?

The High Court decision in November 2023 provoked a great deal of debate and discussion. The invention in this case related to a technique for providing media file recommendations to a user. The claimed method would provide recommendations for media files that were similar to an input file, based on apparently similar tastes of other humans. This was achieved by training an artificial neural network (ANN) using a training set that included media files that could be described objectively, based on their physical characteristics, and subjectively, in written form. The method was able to identify similar media files by merging an assessment of these two criteria together, mimicking the way in which they might be assessed by a human. The output was a file recommendation for a user. This file recommendation was determined to be “better” in the sense that it is more likely to meet the needs of a human user by providing an appropriate recommendation.

The High Court decision had two notable aspects. First, the Court decided that an ANN did not involve the use of a computer program at all. Accordingly, the Court decided that an ANN could not be excluded from patent law on that basis. Second, the High Court decided that even if the exclusion had been engaged, the relevant invention would have been allowable because it involved a technical contribution.

The UKIPO was quick to update its examination guidance to be consistent with the High Court decision. Their updated guidance instructed examiners not to object to claims relating to ANNs on the basis that they are programs.

The Court of Appeal judgment has now entirely reversed the High Court decision. According to the Court of Appeal, an ANN does indeed involve a program for a computer, and, in the particular case, it amounted to no more than a computer program because there was no technical contribution.

It is a little difficult to provide a positive overall message about the Emotional Perception case. The flip-flopping of guidance from the courts has caused a great deal of uncertainty among applicants. Some applicants will have updated their filing strategies and approach to claim drafting in an attempt to take advantage of the changed UKIPO guidance. The Court of Appeal decision reverses all of that and takes us back to the situation, much as it was in November 2023.

One positive that can be taken is that the decision does, at least, maintain a certain consistency between the law in the UK and the EPO. There is also a pleasing symmetry in the treatment of simulations in G1/19 and ANNs by the Court of Appeal. Both were seen as sub-categories of computer programs, and neither was held to deserve any special treatment from a patentability perspective. The basic principles for examining computer implemented inventions should be applied in both cases, and the decisive question should be whether the relevant invention involves a technical contribution, or, if you prefer, whether it provides a technical solution to a technical problem.

A potential negative from the Court of Appeal decision relates to the way they chose to define a computer and a computer program. The fact that the Court even decided to provide a definition is something of a surprise (to this writer, at least). They could have chosen to decide that an ANN is a computer and involves a computer program without adopting a particular definition that could prove to be problematic when applied to other technologies. The definition provided for a computer is a “machine which processes information” and a program for a computer has been defined as “a set of instructions for a computer to do something”. These are broad definitions. It could be argued that a transistor is a basic form of computer, given that it can process digital information. A transistor could be controlled by a basic element like a timer, and the timing signals could be interpreted as a set of instructions for the transistor to do something. Similarly, a sextant could be considered a kind of mechanical computer for calculating angles. The instruction manual for the sextant could be interpreted as a program for a computer. This last example may stretch the definition a little, but they demonstrate the potential problems generated by the new definitions. It would be a concern if the UKIPO were to use this wording to fit the computer program exclusion to a broader category of devices.

More broadly, the decision causes us to re-examine the requirements for obtaining a patent in this area. The requirement for technical subject matter has become a familiar part of the landscape for patent attorneys working in high tech. As a group, we have become adept at explaining the tests as applied by the EPO and the UKIPO to clients and often confused practitioners from other countries. As a captive can develop affection for their captor, we are in thrall to the technical contribution and sometimes this familiarity means that we fail to question whether it really makes sense. It is in this context, I would suggest, that many have chosen to celebrate the Court of Appeal decision in Emotional Perception. However, at an intellectual level it is difficult to explain why the media file recommendation engine developed by Emotional Perception should be any less deserving of a patent than an invention that provides a technical contribution. It seems like such an arbitrary place to draw the line. Why should it matter that the file recommendation in Emotional Perception can only be judged as being better from a subjective, human perspective?

This raises a fundamental question about what kind of inventions are really deserving of patent protection, and whether we are ready to move on from the “technical contribution” tests.”