Emotional Perception application refused again by the UKIPO

The UKIPO has recently issued a second decision refusing the Emotional Perception AI patent application, this time for a lack of inventive step. 

Initially, this patent application was refused by the UKIPO as being excluded from patentability for being no more than a computer program. That decision was appealed all the way to the UK Supreme Court. The Supreme Court rejected the precedent that had been previously relied upon by the UKIPO, and concluded that the invention was not excluded from patentability because it included some aspects of hardware, which (in a literal sense) are not computer programs. In this new decision, the UKIPO Hearing Officer applied the three-step test, which is set out separately in its own practice notice, released over the summer.

The practice notice explains that examination should involve three distinct steps:

1. the “first hurdle” – decide whether the subject matter of the claim qualifies as an invention by applying the “any hardware” approach;
2. the “intermediate step” – identify the features of the claim which contribute to the technical character of the invention, viewed as a whole; and
3. the “second hurdle” – assess whether the invention is new, then whether it involves an inventive step in relation to the prior art by considering only those features which do so contribute to technical character

In this case, the Supreme Court has already decided that the “first hurdle” is passed, and that the claim qualifies as an invention because it includes some technical features.

In applying step (2), the Hearing Officer characterised the technical character of the invention as:

“computer hardware running a program that selects and outputs a file”

The decision included some discussion about whether outputting a “semantically better” file involved technical character. The Hearing Officer concluded that this did not involve technical character because the output file is better only in that a human being might say that it is a subjectively better result. Although this might be a “better” file from a user’s perspective, there is no improvement from the perspective of any machine, and therefore there is no technical character.

In step (3), the Hearing Officer concluded that computer hardware that runs a program and selects and outputs a file is well known, and is therefore obvious over common general knowledge. The Hearing Officer did not feel the need to cite any specific prior art or to evidence the common general knowledge. 

How did the Hearing Officer approach the three-step test?

The outcome here is not a surprise, but there are some interesting points to note in the reasoning that has been adopted.

First, it is curious that the “intermediate step” explicitly must be performed after the “first hurdle” and before the “second hurdle”.  In both the first hurdle and the intermediate step, it is necessary to identify technical features in the claim. In that sense, the first hurdle seems to be answered as a consequence of applying the intermediate step. In the intermediate step, if a single feature is identified that contributes to technical character then, logically, the claim must also involve technical means and must qualify as an invention.

Second, it is surprising that the Hearing Officer did not engage in feature-by-feature analysis of the claim. Instead, the Hearing Officer presented a simplified and paraphrased version of the claim. This approach is a little concerning because it tends to encourage examiners to reduce complicated inventions to shorter, pithy summaries. This approach does produce decisions that are easier to read, but it also risks an oversimplification of complex inventions.

Finally, the decision seems to skip over the question of novelty and to provide some confusing reasoning on the question of inventive step. Principle F in EPO decision Duns, which was referenced specifically by the Supreme Court, requires that non-technical features  “do not provide a technical contribution to the prior art and are thus ignored in assessing novelty and inventive step”. In addition, the practice notice specifically requires an assessment of whether the invention is new. It is notable, therefore, that the decision entirely ignores the question of novelty. When looking at inventive step, the Hearing Officer concludes that the technical features of the claim are “very well known”, and are therefore obvious over common general knowledge. This might arrive at the correct conclusion, but the reasoning seems to lack precision, and to conflate the requirements of novelty and inventive step. 

Comparison with the EPO’s approach

The EPO approach would identify the technical features in the claim, and determine whether those features are novel, based on the prior art. If the technical features are known then a European examiner would reason that the invention must lack an inventive step because the only remaining features are non-technical, and these features cannot contribute to inventive step. By contrast, the UKIPO decision appears to conclude that the invention lacks an inventive step because the technical features are well known.   

Given the history of the case to date, it seems likely that the applicant will file an appeal. It will be interesting to see whether any of the points above are seized upon by the High Court, and whether there is any refinement in the UKIPO’s approach.

Please feel free to get in touch with your usual GJE attorney if you would like to discuss how this might affect your portfolio, or any specific cases. Alternatively, you can email us: gje@gje.com.