From Emotional Perception to the UPC? How we might get there and why it makes sense

The UK Supreme Court has handed down its much-awaited judgment in Emotional Perception. The judgment does not disappoint and represents a significant change to UK law on patent eligibility. The decision will have far-reaching implications for the patentability of computer-implemented inventions, including AI inventions, in the UK.

The judgment provides clear guidance that the divergent approach in the UK on assessing patent eligibility is no longer tenable and that the UK must align more closely with the established approach at the EPO. However, the judgment leaves some key details to be ironed out.

In this article, we offer comments on possible approaches and where these may lead us.

What Emotional Perception says and what it doesn’t say

In its judgment, the Supreme Court concluded that, following the EPO Enlarged Board of Appeal decision in G1/19, the previous leading UK case on patent eligibility (Aerotel) is no longer good law. In particular, the Supreme Court emphasized the need for alignment with the EPO’s interpretation of Article 52 EPC on patentable subject matter. For further details on G1/19, see our article here.

Applying the approach set out in G1/19, the patent eligibility hurdle of Article 52 EPC does not usually present a significant difficulty; as long as the invention uses technical means (e.g. involves a computer) this hurdle will be overcome. However, there is a need to consider which features of “mixed” inventions, such as computer-implemented inventions which include a mix of technical and non-technical features, contribute to the technical character of an invention and can be considered when assessing inventive step. While the Supreme Court has approved the adoption of an “intermediate step” of this kind, it has left it to others to develop how this should be implemented. It does however imply that the solution will not be to adopt the EPO approach wholesale – specifically noting that while the EPO incorporates the “intermediate step” into its analysis of inventive step under the problem-solution approach, this is not to be seen as necessary in the UK. Rather, the suggestion is that the existing Pozzoli test for inventive step remains good law.

How the intermediate step of G1/19 may be implemented alongside the Pozzoli test is yet to be determined.

The intermediate step in UK law

How, then, does one implement the intermediate step in the UK?

We speculate that the answer to this question may lie in a greater role for the “inventive concept” of the claim.  The inventive concept is part of the Pozzoli test. However, recent UK practice has been to simply interpret the claim before going on to determine differences from the prior art. This was not a perfect approach and in fact overlooks an important aspect of the Pozzoli test, as recognised by Jacob J in Unilever v Chefaro in remarks also quoted later in Pozzoli v BDMO SA ([1994] R.P.C. 567 at 580, emphasis added):

“It is the inventive concept of the claim in question which must be considered, not some generalised concept to be derived from the specification as a whole. Different claims can, and generally will, have different inventive concepts. The first stage of identification of the concept is likely to be a question of construction: what does the claim mean? It might be thought there is no second stage – the concept is what the claim covers and that is that. But that is too wooden and not what courts, applying Windsurfing stage one, have done. It is too wooden because if one merely construes the claim one does not distinguish between portions which matter and portions which, although limitations on the ambit of the claim, do not. One is trying to identify the essence of the claim in this exercise.”

The emphasised portion of the above quote is particularly prescient in light of Emotional Perception. It can be interpreted as saying in slightly different language what the role of the intermediate step is; namely to act as a filter to identify the appropriate features to consider in the assessment of inventive step – i.e. those features which contribute to the technical character of the invention (the “essence” of the claim).

Would a reformulated Pozzoli test lead to the UPC inventive step test?

The UPC Court of Appeal recently established the UPC’s own test for inventive step.  For further details on the UPC test, which is similar to the German inventive step test, see our article here.

Like the Pozzoli test, the UPC test is a holistic one, looking at the claim as a whole before any comparison with the prior art.  This distinguishes both approaches from the EPO problem-solution approach, which starts by analyzing each claim feature with respect to the closest prior art.

The main difference between the UPC test and the Pozzoli test, as currently practised, is the distinction between the way the UPC arrives at the “object of the invention” and the manner in which the “inventive concept” of Pozzoli is analysed. The UPC has specified clearly that the object of the invention “must be based on the technical effect(s) that the person skilled in the art… understands is (are) achieved with the claimed invention”. A reformulated Pozzoli test that emphasizes this technical requirement when considering the inventive concept would appear to move the UK closer to the UPC approach. It is interesting to speculate whether this may eventually lead to full convergence.

EPO approach for the first and intermediate steps, plus Pozzoli for third step?

An alternative approach would be to adopt the EPO approach to the intermediate step whilst retaining the current Pozzoli approach for inventive step.

As noted above, the first hurdle of the EPO’s “two hurdle” approach is easy to overcome by ensuring that patent claims recite computer-implementation of method steps or recite specific hardware, because “any hardware” is sufficient for eligibility. If the claim is directed to or uses technical systems or components, it is not excluded under Article 52(2)(c).

The EPO’s second hurdle, which involves a substantive examination for inventive step, requires the invention to have a technical character because only the claim features that contribute to the invention’s technical character (contributing to the technical solution of a technical problem by providing a technical effect) are considered to be capable of supporting an inventive step. The EPO’s approach to this “intermediate step” before assessing inventive step has proven to be adaptable to new technologies and to give reliable outcomes.

However, the EPO’s ‘problem-solution’ assessment is too limited, and the UK Supreme Court noted that it is not required by the European Patent Convention and rejected it. The problem-solution assessment identifies the claimed invention’s differences from the closest prior art, constructs an “objective technical problem” starting from the closest prior art, and then asks whether it would have been obvious for a skilled person to achieve the claimed invention when seeking a solution to that objective technical problem. A broad or narrow definition of this artificially-constructed “objective technical problem” can determine whether an invention appears obvious or not.

We are therefore very pleased to see the Supreme Court’s Lord Justices inviting a broader consideration of inventive step than only the ‘problem-solution’ approach and noting that:

“We see no reason to doubt that, as confirmed by this court in Actavis v ICOS, the approach to inventive step laid out in Pozzoli remains a legitimate approach”.

Concluding remarks

Optimists will note the possibility of the UK IPO implementing the Supreme Court guidance in Emotional Perception in a way that leads to even greater alignment with European practice, and the potential for convergence on the assessment of inventive step in the UK, Germany, and the UPC. Such harmonization tends to reduce costs and uncertainties for industry. Moreover, it would allow the UKIPO and the courts to tap into well-established case law and practice on the examination of computer-implemented inventions in Europe.

Pragmatists will note that the approach of the UPC Court of Appeal has basis within existing UK case law, making it more palatable for UK courts, while also resonating with the Supreme Court’s considerations on alignment. Nevertheless, the approach of the UPC Court of Appeal is not the only option.

Venner Shipley is proud to have helped the Supreme Court with its considerations. Partners Richard Kennedy and Mike Jennings were significant contributors to the drafting of a joint CIPA & IP Federation “intervention” offering recommendations for the assessment of patentability of computer-implemented inventions. The Supreme Court confirmed that this intervention was very helpful.