UK Supreme Court hands down landmark Emotional Perception AI decision

Key points of the judgment

1. Abandoning the Aerotel four-step test

Arguably the most significant aspect of the judgment is the Court’s rejection of the Aerotel four-step test, which has been a cornerstone of UK patent law since 2006.

The Court held that Aerotel had effectively conflated the threshold question of whether something is an “invention” under Article 52 EPC with the separate requirements of novelty and inventive step.

In particular, the focus of the Aerotel test on whether the invention made a “technical contribution” was criticised as misinterpreting the structure of the EPC. The Court stated that the requirement of technical character at the Article 52(1) stage is “a distinct and prior inquiry” and should not be collapsed into the assessment of inventive step.

The Supreme Court instead endorsed the “any hardware” approach, as established in EPO Board of Appeal decision T154/04 (Duns Licensing) and as ratified in EPO Enlarged Board of Appeal decision G1/19. Under the “any hardware” approach:

• If a claimed invention involves or embodies the use of any physical hardware, it is not excluded at the initial “invention” stage.
• The question at this stage is simply whether the claim has technical character, not whether it is novel or inventive.

The Court emphasised that UK courts should respect and follow EPO Enlarged Board decisions “unless convinced they are clearly wrong or beyond the ambit of reasonable difference of opinion”, observing that such decisions are “intended to ensure uniformity in the application of the EPC” and should be treated as highly persuasive. The court found no basis to depart from G1/19.

2. The claims were not excluded “as such”

Although an ANN was determined to be a computer program, this was found to not necessarily exclude the patentability of the invention.

In particular, by applying the “any hardware” approach, the Court held:

• The claimed method involved technical means because the ANN must be implemented on hardware;
• That is sufficient to confer “technical character”; and
• Therefore, the invention is not excluded as a computer program “as such”.

The Court described this as clearing the “first, very low hurdle”. The judgement emphasises that the presence of conventional hardware (for example, any computer) is enough to establish technical character; a determination that is consistent with the EPO approach to the assessment of excluded subject matter.

After satisfying the initial “invention” requirement, the Court recognises an important additional filtering step, referred to in G1/19 as the “intermediate step.”  The intermediate step lies between determining whether something is an invention and assessing novelty and inventive step, filters out features that do not contribute to the technical character of the invention, and ensures that non-technical features “cannot contribute to inventive step”.

The Court made it clear that, at the inventive step stage, only those features which contribute to the technical character of the invention may be taken into account. Non-technical aspects, such as, aesthetic, business or abstract features, must be disregarded.  The findings of the Court in this regard will be very familiar to those with experience of the prosecution of CII applications before the EPO.

Interestingly, the Court sees no conflict with the established UK test for inventive step (the Pozzoli test), which relies on consideration of the claim features collectively.  The EPO approach to inventive step assessment (the Problem and Solution method) relies more on consideration of individual features, and would therefore initially appear a better fit for the G1/19 intermediate step model.

3. An artificial neural network is a “program for a computer”

The Court rejected the applicant’s argument that an ANN is not a “program for a computer”.  Instead, the Court adopted a broad interpretation of the term “computer”, stating that the term is not limited to conventional digital computers, but instead extends to analogue computers, quantum computers, and other forms of computing machinery.  Further, the term “program” was interpreted to mean a set of instructions capable of being followed by a computer of any kind to produce desired manipulations of data.

The Court endorsed the Hearing Officer’s characterisation of an ANN as “an abstract model that takes numerical input, applies mathematical operations (weights, biases and activation functions), and produces numerical output.”  Using this characterisation, the Court found that an ANN, however implemented, “operates by processing data according to a defined set of mathematical rules” and is therefore properly characterised as a computer program.