Date: 27 November 2023
An interesting decision has emerged from the UK Patents Court supporting the patentability of an artificial neural network (ANN) system. ANNs make up the backbone of all deep learning artificial intelligence (AI) systems.
Emotional Perception AI Ltd. had applied for a patent for an ANN system that provides content recommendations to a user of the type “if you liked that, you might also like this”. The Patent Office (the Intellectual Property Office) had rejected the patent application on the grounds that it claimed no more than a computer program, which is excluded from patentability under Section 1(2)(c) of the UK Patents Act 1977. In a landmark decision, Mr. Justice Mann of the Patents Court has overruled that decision.
The invention was said to be able to offer suggestions of similar music in terms of human perception and emotion irrespective of the genre of music and the apparently similar tastes of other humans. If true, this might contrast with known systems that make content suggestions. But the UKIPO, until now, has ruled out patenting of inventions that have, as their novel beneficial effect, aspects of a subjective and cognitive nature. The UKIPO has merely asked questions such as “is it a better computer in the sense of running more efficiently and effectively as a computer?”
The EPO applies a similar approach and rules out patenting AI inventions that classify content depending on cognitive factors. EPO Board of Appeal decision T1358/09, for example, related to an application for a method for the computerised classification of unclassified text documents into predefined classes. The Board took the view that, whereas classification of text documents may help to locate text with a relevant cognitive content, this does not qualify as a technical purpose. Whether two documents in respect of their textual content belong to the same “class" is not considered a technical issue. That decision was approved by the Enlarged Board of Appeal in G1/19 (Pedestrian Simulation). Cognitive data, i.e. data the content and meaning of which are only relevant to human users, are not considered as contributing to producing a technical effect (Guideline G-II, 3.6.3).
By contrast, Mann J. for the UK Patents Court said, in this case, that the system “is not a computer program per se” so it is not excluded from patentability, and it is irrelevant that the beneficial effect is of a “subjective and cognitive nature“, but rather it is a technical effect outside the computer that “the output is a file that would not otherwise be selected.” He said this itself is a technical effect. Mann J. said “insofar as necessary, the trained ANN hardware is capable of being an external technical effect” such that the exclusion from patentability does not apply.
On is face, this decision throws open doors that have been closed to patent applicants. We have in the past argued, for example, that the fact that the machine delivers a different result from the result a human would give is a positive indicator of technicality. Such an argument has heretofore been dismissed. Doing a “better” job of classifying data has been deemed unpatentable. The same logic applies to systems for diagnosing illnesses or medical conditions. Such systems first emerged as rule-based systems and were universally deemed unpatentable (on the grounds that they were computer implementations of a mental act or of a method of diagnosis – both of which are themselves excluded from patentability). Such systems have never been considered patentable in the UK or Europe. These days, such systems use AI. Might this decision open up this field to patenting for the first time?
This new decision necessitates that we look back at advice given in recent years to all sorts of clients in the field of AI systems, and possibly advise that there are new opportunities in the UK to patent systems previously considered unpatentable.
Mann J. said of the system in question “the actual program is a subsidiary part of the claim and is not what is claimed”. This throws open the suggestion that it is the form of the claim that is critical rather than the substance. The UKIPO may well appeal this decision to the Court of Appeal. The Patent Court did not make any reference to EPO case law notwithstanding that section 1(2)(c) is one of the provisions of the Act that is “so framed as to have, as nearly as practicable, the same effects in the United Kingdom as the corresponding provisions of the European Patent Convention” (s.130(7) Patents Act 1977). The UKIPO may seek confirmation or clarification. It is ill equipped to handle a new flood of AI inventions and may need to recruit into this field if this decision stands.
 Emotional Perception AI Ltd. v Comptroller General of Patents, Designs and Trade Marks,  EWHC 2948 (Ch) 21 November 2023