From Aerotel to G1/19: A new era for examination of computer-implemented inventions in the UK

Earlier this morning, the Supreme Court handed down its judgment in Emotional Perception AI v Comptroller General of Patents. In a welcome move, the Court has decided that the UK should adopt the “any hardware” approach approved in EPO Enlarged Board of Appeal Decision G1/19 (Pedestrian Simulation).

The case relates to whether an invention involving an artificial neural network (ANN) is excluded from patentability as a “program for a computer … as such”. The case also required the Court to determine whether the long‑standing UK approach to computer‑implemented inventions in Aerotel remains correct after G1/19.

The Supreme Court noted that the Aerotel approach had been clearly rejected in G1/19. The Court concluded that the UK should align with the Enlarged Board’s interpretation of Article 52 EPC, and that Aerotel should no longer be followed. Instead, UK courts should apply the principles affirmed in G1/19 and Duns, while retaining the domestic approach to inventive step, namely Pozzoli.

The Court held that an ANN is a “program for a computer” and that the machine on which an ANN is implemented is the computer, irrespective of the specific technology used in the implementation. Although an ANN is an abstract computational model, when implemented on hardware it functions as a set of instructions causing the machine to process data in a specified way. The invention in this case, however, is not a program “as such” because it employs technical means, including hardware, a database, and a communications network.

The appeal by Emotional Perception AI was allowed and the case was remitted to the UKIPO to assess novelty and inventive step. The Supreme Court acknowledged that its guidance could potentially lead to changes as to how novelty and inventive step are assessed in the UK. However, other than the requirement of an “intermediate step” for identifying technical parts of mixed inventions, the Supreme Court did not provide any further details of what this may entail. No doubt, the details of how the intermediate step should be applied, and its interaction with the Pozzoli test, will need to be ironed out by the UK IPO and the UK courts in due course.

This decision will be welcomed by applicants, especially UK-based research institutions, start-ups, scale-ups and high-tech SMEs, looking to protect their research and development, as it extends the more consistent and predictable EPO approach to computer-implemented inventions to the UK.

Further, more detailed analysis will follow.