Artificial Neural Networks do not get special treatment before the UKIPO
The UK Court of Appeal has overturned the decision of the High Court over patentability of artificial neural networks (ANNs). They are to be treated like any other computer program when assessing patentability. An AI Invention must have a technical contribution if it is to be Patentable in the UK.
Previously, the High Court[1] had ruled that an ANN is not a “program for a computer” and therefore not subject to the exclusion of section 1(2) of the UK Patents Act. An ANN may be implemented in hardware or in software that emulates hardware. The High Court interpreted the computer program exclusion narrowly and said that ANNs are not excluded and that this was so regardless of how technical or how devoid of technicality was the purpose of the ANN. On that basis, the UKIPO amended its guidelines to permit claims to ANNs (so long as they are explicitly drawn to an ANN).
The Comptroller-General of Patents, Designs and Trade Marks appealed to the Court of Appeal. This does not happen very often, but where there is an important point of law or some uncertainty how the Office is to apply the law, the Office will challenge decisions of the High Court in this way.
The Court of Appeal looked at the meaning of the words “program for a computer” and ruled[2] that the expression is not limited to a sequence of instructions, but encompasses the weights and biases of an ANN. It is irrelevant whether they operate in sequence or parallel. To rule otherwise would be to sweep aside decades of case law on the non-patentability of computer programs for such things as financial trading systems (Merrill Lynch[3]) simply on the basis that they are implemented in an ANN.
The Court of Appeal considered the doctrine that a statute is “always speaking” such that the meaning of a statutory expression does not change even though the class of things it covers may change, for example through the progress of technology.[4]
Having concluded that ANNs are subject to the “computer program” exclusion, the Court of Appeal had to consider whether the exclusion applies in the particular facts of the Emotional Perception AI invention. Just because an invention is implemented in a computer does not, by itself, exclude it from patentability. Many computer implemented inventions fall outside the exclusion and are patentable. A computer implemented invention for controlling an X-ray machine is given as an example.[5]
Before the EPO, the question asked is whether the invention is a computer program “as such” and the COMVIK analysis is applied to identify technical and non-technical features and to consider only the former when analysing inventive step. The UK Courts apply a different approach set out in Aerotel[6], which the Court of Appeal summarised “loosely as being to work out if the claimed invention makes a contribution that is technical in nature”. Caveats are that the “contribution” is not the same as the inventive step and that the mere fact that a computer is involved does not make the contribution technical.
In the present case, the invention analysed music and offered suggestions for musical choices that may be of interest to a listener and, as an output, it delivered a musical file. The Court of Appeal said “put simply, the program here provides improved file recommendations – that is what it does.” By characterising the invention in these terms the Court of Appeal concluded it was non-technical. It was not a “better computer” and it was irrelevant that there was, at the conclusion of the process, the outputting of a file of music. At the first instance, the UKIPO Hearing Officer held that what distinguishes the selected file from a standard file was the fact that the file was a better recommendation. (This could be considered a mere recommendation message, which itself might be a mere presentation of information and therefore excluded anyway from patentability, but this was merely obiter comment.) The Court of Appeal agreed. The reasons why the recommended file is selected for recommendation are subjective and cognitive in nature and not technical. The invention was not patentable.
UKIPO Guidelines
Following the judgment, the UKIPO has made an immediate change to practice for the examination of artificial neural networks (ANNs) for excluded subject matter. Patent examiners should now treat ANN-implemented inventions like any other computer implemented invention for the purposes of section 1(2). This means examiners should apply the Aerotel approach to assess whether an ANN-implemented invention makes a contribution which is technical in nature.
For the avoidance of any doubt, this supersedes the previous patent practice notice PPN of 03/23 which stated that examiners should not object to inventions involving an ANN under the “program for a computer” exclusion.
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Comment
The earlier decision of the High Court stood out against the grain of UK and EPO decisions. Seemingly, implementing an invention in a new kind of computer neutralized the exclusion. The Court of Appeal has reined the law back in and has done so in language that more closely follows that of the EPO Boards of Appeal.
The Court of Appeal refers the “technical contribution” which is an expression not used in Aerotel and avoided in the UKIPO guidelines but which more closely follows the EPO approach and also refers to the “subjective and cognitive” nature of the contribution, which is again a familiar approach before the EPO.
What also emerges from the judgement is a number of cases that one might refer to as “safe harbours” for patenting computer related inventions in the UK. These are:
- “Better computer” inventions such as in Symbian[7]
- Designing (or making) something technical as in Halliburton[8]
- Improving monitoring of content of electronic communications where the contribution of the invention possesses the necessary characteristics of a technical contribution outside the computer itself, as in Protecting Kids the World Over[9]
- Initiating a transfer (i.e. movement) of data between devices, as in Gemstar v Virgin Media[10]
With regard to the “better computer” inventions, computer related inventions are still patentable where the invention is said to improve the functioning of the computer system itself.
The Halliburton case relates to a method of designing a drill bit using a computer simulation. Halliburton’s application had been refused by the UKIPO on the grounds that the method was both an excluded mental act and an excluded computer program, set out under Section 1(2) of the UK Patents Act. The Court in Halliburton found that the claimed method of designing a drill bit was not an excluded mental act (because the method involves a computer and could not in any case be carried out by a person carrying out the calculations in their head). The Court also found that the claimed method was not an excluded computer program as such (because it is a method of designing a drill bit – which is technical).
In Protecting Kids (PKTWO), the UKIPO hearing officer refused PKTWO’s patent application for a monitoring system claim which related to a system for monitoring the content of electronic communications so as to ensure that children using the internet and the social media were not exposed to inappropriate content or language. The system itself comprised a data communication analysis engine which sampled data packets using "hash tables"; if this analysis found anything untoward, a text or email was automatically sent to a responsible grown-up. The grown-up could then remotely order the computer to terminate the electronic communication or shut it down completely. The hearing found that claim 33 was somewhat untoward itself, being excluded from being even regarded as an invention under the European Patent Convention 1973 Article 52(2) because it related to a computer program and because it was a method of performing a mental act. In PKTWO’s appeal decision, the judge held that the effect of the system claim was an improved monitoring of the content of electronic communications, which was said to be technically superior to anything produced by the prior art. This meant that it possessed the necessary characteristics of a technical contribution outside the computer itself. Accordingly, the contribution of the system claim did not fall wholly within the provision excluding computer programs from patent protection and the invention solved a technical problem lying outside the computer, that of how to improve on the inappropriate communication alarm generation provided by the prior art.
Gemstar v Virgin Media had to do with a patent infringement in which one out of three patents was found as not being excluded from patentability. The patent in question dealt with the transfer of a recording to a secondary device, for example a VCR or recordable DVD, not in relation to the recording itself or to the triggering of the recording by the identification of the programme. Applying the Aerotel test to the patent, it was found that the matter was not excluded as merely a computer programme, as a technical effect was deemed to be present, i.e. the movement of data to the secondary device. The patent was also found to involve more than just the presentation of information as it had a separate effect outside of that movement.
[1] Chancery Division, Business and Property Courts of England and Wales – previously the Patents Court
[2] Comptroller-General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825, para. 68.
[3] Merrill Lynch’s Application [1989] RPC 561
[4] News Corp UK & Ireland v HMRC [2023] UKSC 7
[5] EPO Decision T26/86 Koch v Sterzel
[6] Aerotel v Telco Holding & Macrossan's application [2006] EWCA Civ 1371
[7] Re Halliburton Energy Services [2011] EWHC 2508 (Pat)
[8] Symbian v Comptroller-General of Patents [2008] EWCA Civ 1066
[9] Protecting Kids the World Over (PKTWO) [2011] EWHC 2720 (Pat)
[10] Gemstar v Virgin Media [2009] EWHC 3068
