The ruling changed the way in which section 1 of the PA 1977 should be interpreted, and in turn, it has changed the way in which patent applications, in particular for computer-implemented inventions, should be searched and examined under sections 17 and 18 of the PA 1977.
The IPO’s statutory guidance is divided into two parts. Part 1 summarises the Supreme Court’s judgment in Emotional Perception and explains how examiners should interpret and apply section 1 of the PA 1977. Part 2 provides general guidance on how examiners should apply the judgment in practice.
Read the UKIPO’s guidance here: Search and Examination of UK patent applications under the Patents Act 1977 (as amended).
You can also read Fieldfisher’s detailed analysis of the Supreme Court ruling here: Supreme Court delivers emotional goodbye to old UK law in landmark ruling on the patentability of AI-related inventions.
What has changed?
The Emotional Perception judgment concerned the interpretation and application of section 1 of the Patents Act 1977, which is derived from Article 52 of the European Patent Convention (EPC).
The Supreme Court departed from the UK Court of Appeal’s long-standing four-step test established in Aerotel Ltd v Telco Holdings Ltd & Ors [2006] EWCA Civ 1371 (Aerotel). Instead, it adopted an approach based on European Patent Office case law, particularly the Enlarged Board of Appeal’s decision in G1/19, which endorsed the reasoning in COMVIK and Duns Licensing.
The Supreme Court held that the UK should adopt the same interpretation of Article 52 as the Enlarged Board of Appeal did in G1/19 and apply a new three-step approach.
This is a significant development because it aligns UK law with the EPO practice. Examiners must no longer apply the Aerotel test, which has been used for the past 20 years, and must instead assess applications using the new three-step approach.
The new three-step approach
Part 2 sets out the new UK three-step approach to be applied to computer-implemented inventions:
First hurdle – patentable invention.
- Examiners should apply the “any hardware test”, meaning that if any of the subject matter of the claim involves technical means, e.g. the use of some form of computer hardware, then it should not be excluded from patentability.
- A claim is only excluded under section 1(2) PA 1977 if it involves no technical means at all. Any claim involving hardware or other technical means qualifies as an “invention”.
- Examiners should only raise an objection under section 1(2) if a claimed invention does not involve any technical means.
Intermediate step – assessing technical character
- After applying the “any hardware” test, examiners must identify which features of the claim contribute to the technical character before assessing inventive step.
- This requires a feature-by-feature analysis of the whole claim.
- A feature contributes to technical character if it helps solve a technical problem or interacts with the technical subject matter to achieve that solution.
- Examiners may refer to the EPO guidance where appropriate, although they are not bound by it.
Second hurdle – novelty and inventive step
- Novelty should be assessed as usual in accordance with the current section 2 and section 3 of the Manual of Patent Practice.
- Examiners must continue to assess inventive step using the established test in Pozzoli (and endorsed by the Supreme Court in Actavis v ICOS).
- If the only features distinguishing the invention from the prior art are non-technical, examiners should raise an objection to lack of inventive step – only differences that contribute to the invention’s technical character can support inventiveness.
- If the differences between the invention and the prior art contribute to the invention’s technical character, examiners must assess at step 4 of the Pozzoli test whether those technical differences would have been obvious to the person skilled in the art.
What does this mean in practice?
The guidance is clear, practical and accessible and is broadly welcomed by UK practitioners. Many support the move away from Aerotel and its controversial exclusion analysis, as well as the guidance’s alignment of UK practice with the familiar European framework.
The UKIPO/UK courts, however, have never had to apply the ‘intermediate step’ between the step of assessing inherent patentability (which is a low hurdle now with the “any hardware” approach) and the assessment of novelty and inventive step. It will therefore be interesting to see how useful the guidance proves in practice. One key question will be how examiners identify the technical character of a claim given the relatively limited body of UK case law. The guidance seeks to address this by directing examiners to EPO guidance where appropriate.
The guidance also confirms that examiners should no longer follow sections 1.07 to 1.51.7 of the current Manual of Patent Practice relating to excluded subject matter, which still reflect the Aerotel approach. Those sections will be updated in due course.
Practitioners will be watching closely to see how the UKIPO applies the new framework as the practical impact of the new guidance is still uncertain. It will be especially interesting to see whether the new test ultimately results in a greater proportion of computer-implemented inventions being patented or not.
This article was co-authored by Rebecca Pakenham-Walsh, Senior Professional Support Lawyer at Fieldfisher.
