UK IPO suspended its guidelines on AI patents after High Court judgment

The UK High Court handed down a high-profile ruling last week on a patent application by Emotional Perception AI that the UK IPO had rejected. In response to the ruling, the UK IPO has suspended its guidelines on AI patents.

Experts around the world have long debated under what conditions AI inventions can be patented. Now the UK High Court has raised further questions with its latest decision.

The case concerns a patent application by Emotional Perception AI for a system that recommends data files. The technology uses an artificial neural network (ANN) to, for example, organise music files in a different way than common search algorithms. The UK IPO had initially rejected the application in June 2022 on the basis that it constituted a “program for a computer”, and was thus excluded from patentability in accordance with the Patents Act 1977.

In an appeal against the decision, however, the UK High Court has now found that the application cannot be excluded on this basis.

Legislation falls behind

So far, the UK Intellectual Property Office (IPO) and the EPO have taken different approaches to assessing and analysing the patentability of AI. But moreover, the legislation is not up to date. The current legal regulations in the UK, for example, date back to the late 1970s. A time when computers were not part of everyday life and parliamentarians could not even imagine what role AI would play in 2021. Nevertheless, the Patents Act 1977 forms the legal basis for the current judgment of the UK High Court (case ID: CH-2022-000144).

The current case concerned the application of section 1(2)(c) of the Patents Act 1977 which excludes from patent protection “a program for a computer … as such”. In his judgment, judge Anthony Mann writes, “This appeal raises new questions because it involves deciding whether the use of an aspect of Artificial Intelligence, namely an Artificial Neural Network (ANN), in the circumstances of this case, engages the exclusion.”

Mann concludes that the disputed ANN technology does not fall under the exclusion.

UK IPO considers next step

The UK IPO must now work through the practical consequences of the ruling in detail. As a direct reaction to the ruling, the patent authority has temporarily suspended its own guidelines for examiners on AI inventions. It is unclear whether this now also means that applicants will have to wait longer for the UK IPO to process their AI-related applications. The body must first decide whether it will appeal against this High Court decision.

Furthermore, it is also unclear whether UK legislators will tackle the issue. Tom Woodhouse, AI expert and patent attorney at Page White Farrer, who is not involved in this case, told JUVE Patent, “On the one hand, Emotional Perception is a cogent and pragmatic application of the computer program exclusion to the modern machine learning landscape and that pragmatism should be welcomed. On the other hand, it raised yet more uncertainty and confusion, and perhaps leaves open more questions than it answers – a recurring problem that can only be resolved once and for all by the legislators.”