Sometimes things move very fast in UK patent law. Today, eight days after the England and Wales High Court decision overturning a refusal of a patent application, the UK Intellectual Property Office (UK IPO) has announced, by way of statutory guidance, that:
Patent Examiners should not object to inventions involving an “artificial neural network” under the “program for a computer” exclusion of section 1(2)(c) [of the UK Patents Act 1977].
The UK IPO’s broader AI patentability guidelines published a year ago (and discussed in our previous bulletin) are also, at the time of writing, now suspended, ostensibly for being not permissive enough in terms of patentability of AI in light of this recent decision from the High Court.
Wait, what? All of a sudden it seems that it may now be much easier to obtain patent protection in the UK for software-based inventions and, in particular, those related to artificial neural networks – a welcome step for many patentees.
So how did we get here?
The case at hand
The aforementioned England and Wales High Court decision overturned a prominent UK IPO decision relating to the patentability of AI inventions implementable in hardware and software, cited approvingly in the now suspended guidelines.
The High Court decision, relating to Emotional Perception AI Limited’s suggestion engine (for providing recommendations for music, images, or the like), takes a more expansive view of the sorts of AI innovation that is patentable in the UK. It seems that the UK IPO guidelines – already noted as being more permissive than expected when they launched last year – do not go far enough in the eyes of the High Court. This latest decision is already being viewed by some as representing a fundamental shift in how computer implemented inventions, and in particular software, in general may be assessed in the UK patent system.
Divergence from the EPO?
The UK IPO’s approach on computer implemented inventions, traditionally perceived as more restrictive than that adopted by the European patent Office (EPO), has already started to be viewed in a different light in recent years following the EPO’s own landmark decision G1/19 (discussed here) which tightened the EPO’s regime around inventions involving software based simulations. This arguably has led to a lacuna opening up where, for simulation-based inventions at least, the path to grant may be a good deal smoother at the UK IPO than at the EPO.
This latest High Court decision potentially opens this gap wider with the High Court apparently addressing the EPO concept of “technicality” in a manner that, at first sight, would seem counter to usual EPO practice. Indeed, without naming them directly, the decision appears to indirectly challenge the now ubiquitous EPO concepts of “the technical leakage fallacy” and “broken technical chain fallacy” so often used by the EPO to refuse European patent applications for software.
However, as noted above, it is not just technicality that is in the firing line, as even the fundamental question of what is a “program for a computer” does not escape the High Court’s interrogation. As indicated in the statutory guidance, artificial neural networks do not now fall under the UK Patent Act’s “program for a computer” exclusion. Furthermore, at first sight the answer given by the Court regarding what is (or is not) a “program for a computer” also opens up new lines of argument in favour of patentability for a much wider range of software applications at the UK IPO, not just those involving artificial neural networks.
(Not) all plain sailing
As always of course the devil is very much in the detail, and a careful reading of the latest decision yields a number of areas where counter arguments against broader patentability of software may be developed, not least by patent examiners, but also by third parties. There will no doubt be much to argue over in the coming years when pursuing software applications at the UK IPO. It should also be noted, of course, that the UK IPO may choose to appeal the decision and it’s never over until it’s over – but the rapid appearance of the new statutory guidance above suggests this is now unlikely.
In opening up possible lines of argument in the UK that would ordinarily be rejected at the EPO, this High Court decision may fundamentally change the strategic balance of where to file patent application for software-based inventions – with direct filings in the UK now looking more and more attractive.
In the upcoming part two of this series, we will be considering the decision in detail and discussing just where this may take us in terms of software patentability in the UK. In the meantime though, it seems UK software patents continue to become a better bet and an important consideration in any filing strategy.