As we have reported previously, the High Court issued a remarkable decision last year to overturn a decision by the UKIPO relating to machine learning. One of the key outcomes from that decision was that a trained artificial neural network was not a computer program as such and did not engage any exclusion in patent law.

The UKIPO was quick to update its examination practice in order to follow the High Court decision. However, they were also quick to file an appeal. The UKIPO’s grounds of appeal have recently been published, and they give an insight into the way the UKIPO will structure their case.

As expected, the UKIPO are arguing for an interpretation of the law that would have supported their original decision to refuse the application. As such, they argue that the judge erred in holding that an artificial neural network does not engage the exclusion from patent protection for “a program for a computer … as such”. In their view, a claim should be assessed as a matter of substance, and it should not matter whether a claimed invention is carried out in hardware or in software.

The UKIPO have further argued that the judge was wrong to hold that the invention involved a technical contribution. In the case in question the claimed method involved the output of a file, which could have been a music file that was determined to be similar to an input file.  The UKIPO argue that the fulfilment of subjective or semantic criteria cannot amount to a technical contribution. This is consistent with their previous practice as well as the established practice of the EPO.

In many ways the content of the appeal is not a surprise. The applicant, Emotional Perception, will no doubt feel rather aggrieved that the UKIPO has forced them to defend their patent in these appeal proceedings. They may feel that the UKIPO should really be following the law as established by the Courts, rather than appealing decisions that they have lost and advocating for a particular interpretation.

We will continue to monitor this fascinating case so that we can provide updates.

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.