According to the UKIPO, when it’s an artificial neural network (ANN).  In a judgement handed down on 21 November - Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2023] EWHC 2948 (Ch) – Mann J considered the exclusion, under the Patents Act 1977 Section 1(2)(c), of “a program for a computer … as such” as it applies to an ANN recommending a song to a user.

The case was brought as an appeal against a decision by the comptroller to refuse Emotional Perception AI Ltd’s patent application as being excluded as a computer program as such. The independent claims of the patent application referred to both an ANN itself and a method carried out in a system including an ANN.  The first refers to the use of a hardware neural network, i.e. a physical piece of equipment, and the second refers to an emulated ANN, carried out on a computer.

In the refusal the hearing officer said that he was not persuaded that an emulated ANN could be ‘decoupled’ from the software platform that supports it. 

Mann J in response asked the question “Where is the program”, and concluded that the software implemented ANN does not constitute a computer program as such for the purposes of the exclusion.  In particular, it is not proper to differentiate between the hardware ANN, which does not contain a computer program and the emulated ANN, as they operate in the same way – the emulated ANN can be decoupled from the software.

This decision is reflected in a new UK Intellectual Property Office (UKIPO) Statutory guidance note for Examiners – “Following the judgment, the office is making an immediate change to practice for the examination of ANNs for excluded subject matter. Patent Examiners should not object to inventions involving an ANN under the “program for a computer” exclusion of section 1(2)(c).”

In the hearing, Mann J considered that if he were wrong on the point of exclusion, he should consider whether the claimed invention provided a technical contribution, as required to fully establish whether an invention is excluded.  He decided that, as the outcome of the neural network was to send a file to a user’s computer or mobile device, there was a technical effect outside of the computer.  In particular, the technical contribution is the selection of a file that would not have otherwise been selected, if not for the way the ANN operated.

This is positive news for AI innovation in the UK, and also provides a framework to the patentee for assessing whether an invention will be considered to have a technical effect. The determination at the UKIPO of the technical contribution at this stage is without reference to specific prior art, so it is worth noting that this is not an admission of patentability of the specific invention.   A patentee will still also have to show that the invention has a technical contribution over and above the state of the art.

The broad interpretation of a technical effect will be appealing to UK National patentees, as well as to litigants before the UK courts.  Notably, the European Patent Office (EPO), which also has the power to grant patent protection in the UK, assesses computer implemented inventions using a different test. Therefore, the UK National patent route may be more favourable than the EPO in some circumstances . This may see an increase in parallel UK and EPO prosecution as applicants with AI inventions hedge their bets to secure the broadest protection possible.