Last Friday, 19th July 2024, the Court of Appeal handed down a highly anticipated decision in the case between the Comptroller General of Patents, Designs and Trade Marks (Comptroller) and Emotional Perception AI Ltd (EPL) [2024] EWCA Civ 825. This decision should provide greater clarity on the patentability in the UK of inventions using AI.
In summary, in overturning the lower court's decision, the Court of Appeal has taken the position that when assessing patentability, the use of an artificial neural networks (ANNs) for a particular purpose is no different from the use of a conventional computer program for that purpose. In practice this will mean that ANNs do not receive special treatment compared to more conventional computer programs , and must therefore overcome the established patentability tests.
In this way, the Court of Appeal's interpretation of the computer program exclusion heralds a reversion to the previously established approach of the UKIPO.
Technological Background
Whilst streaming music (or any other media) I'm sure we have all been the recipient of some less than helpful recommendations (Glen Campbell's Rhinestone Cowboy?) provided on the basis of what we had just been listening to. EPL's UK patent application (GB1904713.3) attempted to protect a way of providing more helpful recommendations to a user by training and utilising an ANN for this purpose.
EPL's approach involves analysing descriptions of two pieces of media (eg, song A and song B) using a first ANN to create semantic-space vectors for each piece of media, and then calculating the distance between those semantic-space vectors. A second ANN is then used to assess the physical characteristics of song A and song B (e.g., tempo) to create physical-space vectors for each song. During training of the second ANN, the distance between the physical-space vectors for the two songs is adjusted based on the distance between the semantic-space vectors (ie, semantically similar songs are moved closer in physical-space and vice versa).
After training, the second ANN can take a new song (eg, song C) as input and provide a recommendation (e.g., song D). EPL argued that this recommendation is more relevant than those provided by "naïve" recommendations based solely on physical characteristics, which may not represent the emotional reaction to the media by a listener.
Legal Background
During prosecution before the UKIPO, the examiner objected to EPL's application on the grounds that their media recommendation ANN represents a computer program as such, which is excluded from patentability under Section 1(2) of the Patents Act 1977. This objection was maintained by the Hearing Officer in BL O/542/22. Under the established UK approach, for a computer implemented invention to be patentable it must demonstrate a "technical contribution" (eg, a computer system for designing a drill bit). The UKIPO did not consider providing a better media recommendation to be such a technical contribution because the beneficial effect is subjective (some people like Glen Campbell).
EPL appealed the Hearing Officer's decision to the High Court, and in late 2023 in [2023] EWHC 2948 (Ch) decided in favour of EPL.
In brief, the High Court reasoned that the EPL's patent application covered both an ANN implemented as dedicated hardware and a software emulation of that hardware. Based on the submissions to the High Court, the judge understood that a hardware implementation of an ANN does not run a computer program in the conventional sense (eg, "if-then" statements written by a human programmer). The High Court judge concluded that, because the dedicated hardware implementation does not run a computer program, the software emulation of that hardware also does not run a computer program and could not be excluded from patentability as a computer program as such.
Additionally, the High Court concluded that providing a recommended media file represents a technical effect outside of the computer. In part, this conclusion was based on the understanding that the recommended media file is output on the basis that the ANN performs its analysis and selection in a technical way, to identify that the recommended media file is semantically similar.
The High Court ruling came as something of a surprise to many patent professionals working in this field with its more patentee friendly interpretation of the Section 1(2) exclusions. Any who felt that ANNs warranted a different treatment to other computer programs, or that the current practice did not adequately account for recent developments in AI, would have found much to like in the High Court's ruling. Nonetheless, scepticism abounded given the decision seemed to be a fairly radical divergence from the UK's established practice and that of other jurisdictions such as the European Patent Office.
Court of Appeal
In this recent decision, the Court of Appeal takes a markedly different position. Effectively, the Court of Appeal interprets the expression "computer program" to encompass the weights of an ANN because these weights can be adjusted to cause a machine to process information in a different way. Whilst the weights of an ANN are not the "if-then" statements of a traditional computer program, this difference is considered to be irrelevant.
The Court of Appeal thus concludes that an ANN is a computer (regardless of whether it is implemented in dedicated hardware or as a software emulation) and the weights of that ANN represent a computer program. The training of the ANN to determine those weights is therefore considered to represent part of creating the computer program. These findings of the Court of Appeal place ANNs on a level with any other computer implemented invention, which must therefore demonstrate a "technical contribution" beyond the training and use of the ANN.
In relation to the second line of reasoning, the Court of Appeal agrees with the Hearing Officer's conclusion that what makes the media file worth recommending are the semantic qualities of that media file, which are aesthetic in nature. Providing a recommended media file is therefore considered not to demonstrate the required "technical contribution".
Interestingly, the Court of Appeal references the decision of the Technical Board of Appeal of the EPO T 0306/10 which held that recommendations of whether a song is "good" or "bad" do not amount to a technical effect. Both the EPO and the UK courts have generally held that the despite differences in approach, each will generally come to the same conclusions given particular facts. We are aware that UK patent attorneys have numerous examples of discrepancies in outcomes between the two bodies, but reference to an EPO "T-decision" does at least indicate a continued perceived alignment with the EPO's approach to the examination of computer implemented inventions. While a more patentee friendly approach to ANNs in the UK may have been welcomed in some quarters, consistency and alignment with the EPO is also likely to be appreciated by many attorneys and applicants.
Conclusion
After some initial excitement, the use of ANNs is not the silver bullet the High Court's decision suggested, and it appears that computer implemented inventions using ANNs will once again be required to pass the same tests as other computer implemented inventions.
Looking ahead, EPL do have the option to further appeal this decision to the UK Supreme Court. There is no doubt that Applicants and attorneys alike would be interested in the Supreme Court's guidance in this area, although we feel it would be surprising if the Supreme Court arrived at a substantially different interpretation to the Court of Appeal.
For the time being at least, this decision provides some clarity on the assessment of patentability for computer implemented inventions and a return to normal practice, though clearly the law is in this area has the potential to evolve rapidly.
At the time of writing, the UKIPO's existing guidance in relation to AI inventions is suspended whilst revisions are made to account for the Court of Appeal's decision.
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