Reaffirming the principle that AI inventions must meet the same patentability criteria as other computer-implemented inventions

The recent Court of Appeal decision in EWCA Civ 825 has significant implications for the patentability of AI inventions in the UK. The Court of Appeal reversed the High Court’s ruling, holding that a company’s AI invention, specifically an artificial neural network (ANN) designed to recommend media files, cannot be protected by a patent. The court determined that the invention did not make a technical contribution and thus fell within the exclusion for computer programs under the Patents Act 1977.

The case centred on Emotional Perception AI Ltd’s patent application, which involved training a neural network to recognise whether a media file fits a given description and then using this to recommend similar files. Initially, the UK Intellectual Property Office (IPO) rejected the application, stating that it did not make a technical contribution. The High Court overturned this decision, suggesting that a trained neural network could be considered an external technical effect and thus patentable. However, the Court of Appeal disagreed, emphasising that an ANN, whether implemented in hardware or software, is fundamentally a computer program and does not inherently make a technical contribution.

This decision underscores the stringent criteria for patenting AI inventions in the UK. The Court of Appeal’s judgment clarifies that AI inventions are not in a special category and must be assessed like any other computer-implemented invention. The ruling aligns with the established legal framework, which requires that for an AI invention to be patentable, it must make a technical contribution beyond the mere implementation of a computer program.

The updated guidelines from the IPO, published on 25 July 2024, reflect this decision. These guidelines instruct patent examiners to treat ANN-implemented inventions like any other computer-implemented invention, using the Aerotel approach and the AT&T signposts to assess whether the claimed invention makes a technical contribution. This development is crucial for practitioners and companies in the AI sector, as it delineates the boundaries of what constitutes a patentable AI invention in the UK.

In conclusion, the Court of Appeal’s decision in reaffirms the principle that AI inventions must meet the same patentability criteria as other computer-implemented inventions. This ruling provides clarity and guidance for future AI patent applications, ensuring that only those inventions that make a genuine technical contribution are granted patent protection.