UK update on AI patentability – High Court overturns refusal for a trained Artificial Neural Network (ANN)

The UK High Court has overturned an earlier UKIPO refusal of a patent application for a trained Artificial Neural Network (ANN).This is encouraging for applicants who are investing in AI patenting in the UK.  The UKIPO quickly confirmed that it is changing its examination practice to reflect the court’s judgement.


The UKIPO’s earlier decision

Application GB1904713.3 entitled ‘Method of training a neural network to reflect emotional perception and related system and method for categorizing and finding associated content’ related to an improved system and method for providing media file recommendations to an end user. More particularly, the invention concerned training an artificial neural network (ANN) to perceive semantic similarity or dissimilarity between media files, and using the trained ANN to recommend a file which is semantically similar to a given input. The specific training of the ANN was recited in the independent claims.

Following objections from the UKIPO examiner, the claims to a system including a trained ANN and a method of use for providing semantically relevant file recommendations, were refused by a UKIPO Hearing Officer who concluded that:

the invention falls solely within the matter excluded under section 1(2) as a program for a computer as such. I can see nothing in the specification that could reasonably be expected to form the basis of a valid claim”.

However, the Hearing Officer did not agree with all of the Examiner’s objections, commenting:

On the issue of exclusion as a mathematical method, although an ANN and a method of training an ANN per se is no more than an abstract mathematical algorithm, its specific application here as part of a file recommendation engine is, in my opinion, enough to dispense with the mathematical method as such objection.”


The High Court decision – claimed ANN not excluded as a “computer program”

In Emotional Perception AI v Comptroller-General of Patents [2023] EWHC 2948 (Ch), the Appellant (Emotional Perception AI Ltd) challenged the UKIPO’s earlier decision claiming that:

  1. the computer program exclusion of UK patent law is not engaged at all (one does not get as far as finding a relevant computer program); and
  2. even if there is a computer program and the computer program exclusion is engaged, it does not apply because the claimed invention reveals a technical contribution and the invention is not a computer program as such.

With respect to the first challenge, an important question to be answered was whether an ANN can be “decoupled” from a software platform that supports it. Sir Anthony Mann considered that it is appropriate to look at the claimed ANN as operating at a different level from the underlying software on a computer and accepted that the claimed ANN is not in itself a program for a computer.

It was noted that a computer program is involved at the training stage, with the programming involving setting training objectives in terms of the structure of the ANN, but any computer program was a subsidiary part of the invention and is not what is actually claimed. The claims were found to go beyond a program for a computer as such because the idea of using pairs of files for training and setting the training objective and parameters accordingly was viewed as special, and the invention is not limited to a computer program.

Regarding the second challenge, the Judge found that the claimed system made a technical contribution at least because a selected file having certain attributes such as similarity characteristics is output to an end user by a system that has set up the identification system and implemented it. The recommended media/text file is identified as being semantically similar by the application of technical criteria, which the system has worked out for itself. This was considered to be a technical effect outside the computer.

Further, and more importantly, it was also considered that the ANN that resulted from the training process is capable of being an external technical effect, which prevents the computer program exclusion from applying.

The UKIPO has already issued a notice confirming that the High Court’s decision will lead to a change to the UKIPO’s guidance on patenting AI-related inventions (which we previously reported on here). The decision clarifies that the claimed ANN and its method of use are not excluded from patentability based on the exclusion of “a program for a computer … as such” and the UKIPO notice states that “Following the Emotional Perception judgment, patent examiners should not object to inventions involving ANNs under the “program for a computer” exclusion”.


Other exclusions?

The High Court chose not to assess the “mathematical method” exclusion of UK patent law for the procedural reason that the objection was not properly introduced into the appeal proceedings. The procedural decision seems reasonable in view of the Hearing Officer’s 2022 conclusion that the specific application as part of a file recommendation engine was more than a mathematical method.


Next steps for the application?

It is not yet clear whether the specific application will proceed to grant as the UKIPO had other concerns about the application – including added matter, clarity and sufficiency.


Implications for Industry

This is a positive decision and a positive UKIPO response for applicants seeking to protect an ANN that is trained for a specific application, and its method of use for that application. The decision reinforces our earlier comments that the UK has become a favourable jurisdiction for patenting AI-related inventions.


Legal Advice 

If you would like to discuss the patentability of AI in Europe or UK, please get in touch with Mike Jennings or Lloyd Palmer.

Category: Latest Insights | Author: Mike Jennings, Lloyd Palmer | Published: | Read more