Introduction
The UK High Court issued it’s judgement on Emotional Perception AI Ltd v Comptroller-General of Patents, Designs, and Trade Marks [2023] EWHC 2948 (Ch) , concerning patentability of an invention relating to Artificial Intelligence (AI). Contrary to the UKIPO’s practice, this judgement favored patentability of AI inventions under certain conditions. Following the judgement, the UKIPO has issued statutory guidance that patent examiners should not object to inventions involving artificial neural networks (ANNs) under the “program for a computer” exclusion (section 1(2)(c) of the Patents Act 1977). The UKIPO has now appealed the judgement giving the impression that there could be a further shift in recognizing patent eligibility of AI-related inventions in the UK.
Background
The invention pertains to a method of training an Artificial Neural Network (ANN) to discern semantic similarities or dissimilarities among media files, such as music files, in order to recommend files that share semantic likeness for a given input music file.
The training process involves pairs of media files, each labelled with natural language descriptions of their content. During the training phase, an ANN is trained to independently derive two separation distances for each pair of media files: a first obtained by natural language processing of the labels; and a second derived from on measurable properties, such as tone, timbre, speed, and loudness. Once trained, the ANN can identify semantically similar files from the measurable properties of unlabeled input files, providing a vector in property space for recommending similar files to the user.
The UK Patent Act includes a provision that declares computer programs as such as not being inventions, thereby excluding them from grant of a patent. Whether an invention falls under this exclusion or not is determined by asking what the contribution of the claim itself is and whether this contribution is technical without any reference to the prior art.
In decision BL O/542/22, a UKIPO Hearing Officer found the claimed ANN to be excluded under this provision and refused the application. This conclusion was based on the notion that the provision of a better (i.e. more semantically similar) recommendation is an effect which is “of a subjective and cognitive nature and does not suggest that there is any technical effect over and above the running of a program on a computer”. This decision from the UKIPO was appealed to the UK High Court.
The High Court Decision
The High Court has now overturned the decision of the UKIPO Hearing Officer.
The reasoning (reproduced below) by Justice Mann:
The correct view of what happened, for these purposes, is that a file has been identified, and then moved, because it fulfilled certain criteria. True it is that those criteria are not technical criteria in the sense that they can be described in purely technical terms, but they are criteria nonetheless, and the ANN has certainly gone about its analysis and selection in a technical way. It is not just any old file; it is a file identified as being semantically similar by the application of technical criteria which the system has worked out for itself. So the output is of a file that would not otherwise be selected. That seems to me to be a technical effect outside the computer for these purposes, and when coupled with the purpose and method of selection it fulfils the requirement of technical effect in order to escape the exclusion. I do not see why the possible subjective effect within a user's own non-artificial neural network should disqualify it for these purposes. To adapt the wording of Floyd J in Protecting Kids, the invention is not just one depending on the effect of the computerised process on the user. There is more than that. There is a produced file with (it is said) certain attributes. The file produced then goes on to have an effect on the user (if the thing works at all) but one cannot ignore the fact that a technical thing is actually produced. It would not matter if the user never listened to the file. The file, with its similarity characteristics, is still produced via the system which has set up the identification system and then implemented it.
Justice Mann essentially reasoned that by identifying and moving a file based on a certain criteria, “a technical thing is actually produced”. He acknowledged that even though “criteria” is not technical criteria or which cannot be described in purely technical terms, the ANN has applied a criteria in its analysis and selected a file in a technical way.
Conclusion
The impact of this rather surprising decision on UK patent practice remains to be seen. This judgement however is seen as a welcome change in securing patent protection for AI-related inventions – which is still challenging at the EPO – thereby making UK a preferred jurisdiction for AI-based inventions. In response to this judgement, the UKIPO did issue guidance to the UKIPO Examiners for examining patent applications involving ANNs, which state that “patent examiners should not object to inventions involving ANNs under the ’program for a computer‘ exclusion”.
However, with the UKIPO having decided to appeal this decision, the final resolution remains uncertain. If the decision withstands potential appeal, it could signal a shift towards a more AI-friendly approach at the UKIPO, potentially differing from practices at the EPO and raising questions about how AI-related inventions are evaluated across different jurisdictions. It is also necessary to acknowledge that Justice Mann did not consider whether ANNs fall under the exclusion of mathematical methods as such.
Nonetheless, as the legal landscape continues to evolve, the outcome of this case may influence the future treatment of AI-related inventions in the UK. Assuming that the new statutory guidance for examining patent applications involving ANNs continues to remain in force in the UK, parallel filing of applications in the UK (given the cheaper cost for prosecution in the UK compared to the EPO) can be considered when it comes to AI-related technology.
