In depth: Supreme Court delivers 'bombshell' ruling on software patents - or does it?

For decades now, a fundamental axiom of UK intellectual property law has been that computer software cannot be patented. So it shocked many this week when, in Emotional Perception AI Ltd v Comptroller General of Patents, the Supreme Court upheld an appeal against the Court of Appeal’s endorsement of that universally understood position. 

‘A bombshell,’ said Mark Ridgway, IP partner at international firm A&O Shearman. Lara Sibley, partner at IP specialist Marks & Clerk, described the unanimous ruling as a ‘bold one which makes a fundamental change to how the validity of patents is approached’.

The court’s judgment will certainly require big changes in the way the UK Intellectual Property Office (IPO) assesses applications and how IP lawyers approach disputes.  

But experts stress that, although unexpected, the ruling does not open a new fast lane to the building of patent thickets around the digital economy. Rather, it clears up a conflict between European and UK jurisdictions exposed by an innovation in artificial intelligence. Perhaps unsurprisingly, lords Briggs and Leggatt, who gave the lead judgment, leaned towards the European model. 

The development at the heart of the dispute is potentially very valuable: a program for making media selections based on previous preferences. Emotional Perception AI, a UK startup, claims to do a quicker and better job of ‘if you liked X, you’ll love Y’ recommendations through an artificial neural network that learns to emulate the similarities and differences a human might find between, say, different music tracks.

The neural network does this by learning to spot alignments between ‘semantic’ and ‘physical’ properties of individual pieces of media.

As the Supreme Court – and the previous Court of Appeal – decisions note, neural networks, the basis of machine learning systems, behave very differently from the classic description of a computer with a central processing unit executing ‘if-then’ routines. 

So far as the IPO was concerned, Emotional Intelligence’s patent application fell foul of the European Patent Convention, which excludes ‘programs for computers’ from its categories of patentable inventions. The convention was ‘loosely replicated’, the judges note, by the 1977 Patents Act. The leading case in the interpretation of the legislation was the Court of Appeal’s 2006 ruling in Aerotel, which was a dispute over what, 20 years on, looks like a fairly mundane telecommunications billing system.

Question of invention

The problem, as set out in the Emotional Perception judgment, was that more recent European Patent Office decisions parted company with Aerotel, based on different interpretations of the word ‘invention’. 

Sibley explains that the Aerotel approach ‘requires identifying the actual contribution (what the inventor has really added to human knowledge) and then assessing whether it falls solely within the subject matter excluded from patent eligibility.’

In contrast, the EPO approach is that only eligible claim features be taken into account in assessing innovation. 

'It remains to be seen how, in practice, the UK IPO will interpret the decision and adapt its assessment of inventive step – the result could be more uncertainty in examination outcome at the UK IPO, at least in the short term' 

Lara Sibley, Marks & Clerk

Against the objections of the IPO, which submitted that rejecting the Aerotel approach would ‘cause, or at least risk, a major disruption’, the Supreme Court judges backed Emotional Perception’s appeal. The IPO’s submission ‘approaches the problem from the wrong end of the telescope and reverses what ought at least to be the persuasive burden of proof,’ the judges said. They set aside the original decision of the IPO hearing officer. However, they note that their ruling is confined to the matters resolved in the judgment. 

But in practice, will the Emotional Perception ruling make much difference?

‘More one of form than substance,’ Sibley said. ‘It remains to be seen how, in practice, the UK IPO will interpret the decision and adapt its assessment of inventive step – the result could be more uncertainty in examination outcome at the UK IPO, at least in the short term.’

But Sibley predicted that the decision may make it easier for innovators in the UK to avoid the exclusions for neural networks, provided they are implemented in some form of computer hardware.

Ridgway observed that, on the key issue – the legal test to be applied when assessing patentability and how that works in practice – the judgment ‘raises more questions than answers’.

A spokesperson for the IPO said: ‘We note the decision of the Supreme Court and the clarity it brings to the law in this area. We will update our examination processes and guidance to reflect this decision in due course.’

With the government pinning its hopes on AI to rescue the UK economy – and, indeed the justice system – they will not be the only ones.