Things get Emotional as Court of Appeal says ANN inventions do engage computer program exclusion

We have previously discussed (here, here and here) the exclusion of computer programs from UK patentability and its significance to the patentability of AI inventions. Although it seemed that the High Court in Emotional Perception AI Ltd v Comptroller General of Patents may have been paving the way for increased patentability of artificial neural networks (ANNs), the Court of Appeal has recently overturned that decision, instead finding that the weights and biases of an ANN are a computer program and, accordingly, that ANN-implemented inventions do engage the computer program exclusion. We take a closer look at this decision, and its implications, below.

Background

Patenting AI inventions is notoriously complex, with budding patentees having to weave a fine line between various exclusions from patentability. One exclusion that can be particularly problematic in this sector is that for computer programs. Another is that for mathematical methods. 

The English courts have developed the following four-stage approach to determine whether these exclusions apply: 

(1) properly construe the claim;

(2) identify the actual contribution;

(3) ask whether it falls solely within the excluded subject matter; and

(4) check whether the actual or alleged contribution is actually technical in nature (if it is, the exclusion won't apply).

Whilst this may seem simple in principle, in practice it is difficult to apply – as the Emotional Perception case itself has shown.

The invention in this case involved an ANN which was trained to recommend music tracks to end users based on human perception and emotion (i.e. how the music makes them feel). 

At first instance, the UK Intellectual Property Office (UKIPO) found that this invention was not patentable, on the basis that it engaged the computer program exclusion and the contribution it made was not technical in nature.  

In November last year, the High Court overturned that decision finding instead that Emotional Perception’s invention didn’t involve the operation of a computer program and so the computer program exclusion wasn’t engaged. In case it was wrong about that, the court went on to consider whether there would have been a technical contribution if there had been a claim to a computer program. And it found that there would - the technical contribution being the transfer of a file specifically identified by the ANN (applying technical criteria which the ANN system worked out itself) out of the computer system.

The UKIPO was granted leave to appeal on four grounds, which the Court of Appeal neatly summarised into two key questions.

1. Does the computer program exclusion set out in section 1(2) of the UK Patents Act 1977 have any application to ANNs?

To answer this question, the Court of Appeal considered the meaning of “computer” and “computer program” in section 1(2) and then went on to consider whether there is a computer program in an ANN. 

Ultimately, it found that a “computer” is “a machine which processes information”. And a “computer program” is “a set of instructions for a computer to do something”. Applying this to the case before it, the Court of Appeal concluded that an ANN is a machine for processing information and therefore a computer. And the weights and biases of the ANN are a computer program, as they are a set of instructions for the ANN (a computer) to do something. This is the same, regardless of whether the ANN is in hardware or software form. 

That being the case, the computer program exclusion was engaged.

2. Is the claimed invention excluded from patentability as a computer program “as such”?

The Court of Appeal’s conclusion that the computer program exclusion was engaged did not automatically mean that Emotional Perception’s invention was excluded from patentability in the UK. Whether or not it would be depended on whether the contribution made by the claimed invention is technical in nature. 

For the purposes of assessing this, the Court of Appeal agreed with both the UKIPO and the High Court that the relevant contribution was the provision of improved file recommendations. What distinguished the claimed invention from standard file transmission is that the file represented a “better” recommendation (i.e. a song which the user was likely to enjoy). The question for the Court of Appeal to decide was whether this contribution was technical in nature. In other words, was the UKIPO right to find that the exclusion applied because the beneficial effect was of a subjective and cognitive (as opposed to technical) nature. Or, was the High Court right to find that if the computer program exclusion was engaged it didn’t apply because the ANN reached its improved file recommendation in a technical way. 

Ultimately, the Court of Appeal sided with the UKIPO, on the basis that the program worked by identifying semantic similarity between the already played song and the recommended one. Those semantic qualities were found to be a matter of aesthetics and not technical in nature, with the result that Emotional Perception’s application was excluded from patentability.

Comment

The Court of Appeal’s overturning of the High Court’s decision is not unexpected. Whilst it may be seen as a blow to those looking to patent ANN-implemented inventions, it does not mean that all such inventions will be excluded from patentability. They will be treated like any other computer-implemented invention and may therefore be patented if they provide a technical contribution. But it does mean that ANNs won’t be given any special treatment and reintroduces a hurdle that some had hoped had been removed.

Even if the Court of Appeal had reached the opposite conclusion, however, and agreed with the High Court that the computer program exclusion wasn’t engaged by the invention before it, it indicated (obiter) that it likely would have found the mathematical method exclusion to be engaged. In that event, the outcome would very likely have been the same – the invention would not have been patentable as it does not provide a technical contribution. Either way, it is clear that patenting inventions in this space remains complex and that making sure the claimed invention provides a technical contribution will be key.

In light of the Court of Appeal’s decision, the UKIPO has once again suspended its AI guidelines whilst it considers the implications of this case; and, in the meantime, issued statutory guidance reflecting an immediate change to practice with patent examiners being told to treat ANN-implemented inventions like any other computer-implemented invention for the purposes of section 1(2).