Court of Appeal overturns the High Court judgment in Emotional Perception

In a highly anticipated decision, the Court of Appeal has overturned the judgment of the High Court from last November in Emotional Perception v Comptroller-General of Patents [2023] EWHC 2948 (Ch).

In allowing the appeal, the Court of Appeal has upheld the original decision of the UKIPO to refuse the application as relating to a computer program as such.

The decision signals the end of a brief period of significant deviation from EPO practice in which the UKIPO became more permissive in assessing the patentability of inventions relating to artificial neural networks (ANNs). The decision from the Court of Appeal rows back on this, finding that ANN implemented inventions may be patentable but should be assessed in the same fact-specific way as any other computer-implemented invention.

Emotional Perception has indicated that it plans to appeal the decision to the Supreme Court.

What is a “computer” and a “program for a computer”?

At the High Court, significant weight had been placed on the fact that the application suggested that the ANN could be implemented in hardware, with resulting questions arising around whether such an implementation would involve a “program for a computer” at all. In particular, the suggestion had arisen that a computer program required human authorship in a manner that contrasted with machine-learnt weights and biases.

The Court of Appeal dealt with these issues, giving concise definitions for a computer as “a machine which processes information” and a computer program as “a set of instructions for a computer to do something” – no requirement for human intervention was added to this latter definition. In finding that ANNs and the values of their weights fall within these definitions, the Court has clarified that ANN implemented inventions are in no better and no worse position than other computer-implemented inventions.

Importantly, the fact that the computer program exclusion is engaged for an ANN implemented invention does not mean that the invention is unpatentable. The key question in such a case is whether the invention as defined in the claim makes a technical contribution to the known art – if it does, then it is not excluded.

Greater alignment with the EPO approach?

The now-overturned High Court decision suggested a divergence between the approaches taken to AI inventions by the UK courts (and consequently the UKIPO) and the EPO, as we noted here.

In contrast, there are notable resonances between the reasoning of the Court of Appeal and the approach of the EPO. Moreover, the Court’s references to and alignment with the EPO Technical Boards of Appeal in Yahoo (T-0306/10) and Mitsubishi (T-702/20), suggest that this is not a coincidence and there is a general desire to maintain consistency if possible.

Notwithstanding the message of consistency with earlier UK case law and EPO outcomes, the Court of Appeal provides useful guidance, identifying that an AI invention can make a technical contribution based on its “function” but also recognising that certain inventions may lead more generally to a “better computer”. Practitioners will follow closely the impact of this guidance.