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Just as it looked like Sir Anthony Mann’s High Court judgement in the Emotional Perception AI case would be the last most recent word on software patenting in the UK, with the statutory guidance being rewritten to match, the UK Intellectual Property Office (UK IPO) have turned on their heels and muttered “just one more thing…”
As reported in our previous bulletin just under a month ago, the previously relatively settled UK patent law on the patentability of AI inventions implementable in hardware and software was overturned by an England and Wales High Court decision.
In this decision, Sir Anthony Mann found that the UK Intellectual Property Office (UK IPO) had erred in refusing to grant a patent application directed to Emotional Perception AI Limited’s suggestion engine (for providing recommendations for music, images, or the like). One of the key aspects of the decision was whether the claimed artificial neural network should be considered to be a ‘program for a computer as such’ (and therefore unable to support patentability), or whether it should instead be considered to produce a further technical effect beyond simply being a ‘program for a computer as such’ (and therefore, in principle, be patentable). As many patentees will know, when prosecuting UK patent applications for AI inventions, convincing a UK IPO examiner that the invention is not merely ‘a program for a computer as such’ is often a significant requirement in the route to obtaining grant of a patent.
After the High Court decision was released, the UK IPO fairly quickly suspended their AI patentability guidelines, seemingly for no longer being permissive enough for AI inventions, and further 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].
It therefore seemed that the UK IPO had accepted the High Court decision and was about to implement a change in practice – something that would have been welcomed by many patentees and potential patentees.
However, in this story’s plot twist, the UK IPO have now issued a statement to the Chartered Institute of Patent Attorneys, confirming that they have sought (and gained) permission to take the case to the Court of Appeal. No further details on the Appeal have been provided, but, as mentioned in our previous bulletin, it’s never over until it’s over and it appears that the UK IPO may not have accepted the High Court decision quite so readily.
As things stand, the UK IPO’s AI patentability guidelines remain suspended, however the statutory guidance saying that artificial neural networks should not be dismissed as ‘a program for a computer as such’ still applies. With a looming appeal, the law is now in flux – all of this reinforcing the need to carefully consider the UK in the strategic balance of where to file patent applications for software-based inventions. We will issue a further bulletin shortly considering the High Court decision in more detail, and we will provide updates on the UK IPO’s Appeal as and when we have them.