Aerotel Consigned to the Bin - Sea Change for Software Patents in the UK
The UK Supreme Court (UKSC) has handed down their judgment in the Emotional Perception appeal.
The UKSC has significantly changed how software-based inventions are to be assessed in the UK, potentially opening the door to the UK being more software patent friendly.
Summary
The UK Supreme Court (UKSC) has handed down its judgement in Emotional Perception AI Limited (Appellant) v Comptroller General of Patents, Designs and Trade Marks (Respondent) [2026] UKSC 3, on appeal from [2024] EWCA Civ 825.
Critically, the UKSC has set out that the Aerotel approach for assessing whether an alleged invention is excluded subject matter is no longer to be followed and sets out that the UK should conform with the more holistic approach used by the EPO.
In short, this judgement will hopefully open the door to a more software patent-friendly forum in the UK in which computer-implemented inventions are treated more favourably than they have in the past. I expect this will be a developing area of law as there are questions that are left unanswered by the judgement, particularly around the ‘intermediate step’ for assessing novelty and inventive step of these types of inventions.
Background
Under the UK Patents Act, there are a number of types of invention which are ruled out from patentability. These are set out in Section 1(2) Patents Act 1977:
“It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—
(a)a discovery, scientific theory or mathematical method;
(b)a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c)a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer;
(d)the presentation of information;
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.” (emphasis added)
The intent, when the Act was drafted, was to exclude certain things from patentability for policy reasons, either because they were already covered by other forms of IP protection better suited than patents (e.g. copyright for artistic works such as literature, music, etc.) or for being too abstract. Among the list is programs for computers, which would be covered by copyright. However, while copyright has its place, it does not confer the same protections that a patent would (for one thing, copyright only protects against copying of the expression of an idea – i.e. the actual code – whereas a patent provides a monopoly right over a technical idea or function). Moreover, when the Act was written, it is possible that its authors did not foresee a world in which many legitimate inventions are based in software.
The list of ideas excluded from patentability are excluded ‘as such’, and these two little words do a lot of heavy lifting in the world of patent law. Specifically, they are intended to mean those things cannot be patented in their own right, but patentable inventions may nevertheless involve such things.
It follows that it becomes important to determine whether a given computer-implemented/software-based invention, presented in the form of a claim of a patent application, is directed to ‘a program for a computer as such’. It is here where practice between the UK Intellectual Property Office (UKIPO) and the European Patent Office (EPO) has diverged for many years.
UK Approach
Since 2006, the UKIPO have followed a test set out in Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371; [2007] Bus LR 634; [2007] RPC 7 (“Aerotel”). This four-step test involved the following:
Properly construe the claim;
Identify the actual contribution;
Ask whether the contribution falls solely within excluded subject matter; and
Check whether the contribution is technical in nature.
Then, to help assess whether a such an invention makes a technical contribution, the UKIPO follow the five so-called AT&T signposts (from AT&T Knowledge Ventures/Cvon Innovations v Comptroller General of Patents [2009] EWHC 343 (Pat)):
whether the claimed technical effect has a technical effect on a process which is carried on outside the computer (from Vicom)
whether the claimed technical effect operates at the level of the architecture of the computer; that is to say whether the effect is produced irrespective of the data being processed or the applications being run (from IBM T 0006/83, IBM T 0115/85, Merrill Lynch, Symbian)
whether the claimed technical effect results in the computer being made to operate in a new way (from Gale)
whether the program makes the computer a better computer in the sense of running more efficiently and effectively as a computer (from Vicom, Symbian; as reworded in HTC v Apple)
whether the perceived problem is overcome by the claimed invention as opposed to merely being circumvented (from Hitachi T 0258/03 – note that the problem in question must be a technical problem)
All of the above is focussed on a particular paradigm, namely that what should be assessed for exclusion (or not) from patentability is some ‘technical contribution’ associated with the claimed invention, rather than more simply whether the invention as a whole is or is not excluded.
This paradigm is problematic because it involves asking questions of novelty and inventive step, which are separate, standalone requirements for patentability, and making the assessment of eligibility exclusion under the coloured light of the elements thought to be novel and inventive only.
EPO Approach
Conversely, the EPO have made the question of excluded subject matter a much lower hurdle to overcome. Simply put, reciting any form of hardware or technical means in a claim would make it prima facie not excluded from patentability as such. By having a claim refer to a computer, computer-readable storage medium, or some other technical means, the excluded subject matter hurdle is overcome.
The EPO instead shift the emphasis to the point of inventive step assessment, allowing only features that contribute to the solution to a technical problem. Generally this means technical features of the claim but can also include non-technical features insofar as they are used to define the underlying problem to be solved (e.g. serving as constraints to be met).
The Decision
The judgement compares and contrasts these two different approaches and considers whether the Aerotel approach used by the UKIPO is appropriate and compatible with practice at the EPO (Issue 1). The UKSC gave a resounding ‘no’ – the test relied on by the UKIPO for the last 2 decades is not suitable and should be exchanged for something more reflective of EPO practice. In particular, the UKSC has ruled that the rationale of G1/19 as used by the EPO should be followed in the UK too.
In this specific case, there is much discussion in the judgement regarding whether an artificial neural network (ANN) constitutes a ‘program for a computer’ (Issue 2). The UKSC found that it an ANN is a program for a computer, at least in terms of how that concept applies to patent law.
The UKSC then needed to consider whether the ANN, as determined to be a computer program, was excluded in its entirety (Issue 3). As the claim involves the use of hardware, it meets the now-lower bar for being patent-eligible and so it can proceed to assessment of novelty and inventive step.
The UKSC decided not to make any judgement themselves on whether the claims at issue were novel and inventive, and have passed the case back to the first instance to look at those aspects.
The UKSC did comment on the line of argumentation put forward by the Comptroller General that abandoning the Aerotel approach in favour of the EPO’s approach would necessitate revisiting how inventive step is assessed in the UK too. In short, the UKSC found that there was no reason to change how the UK assesses inventive step and that the approach already used is compatible with this change to how excluded subject matter is to be assessed.
The UKSC does recognise that this leads to a need for an ‘intermediate step’ to bridge the gap between making an assessment that a ‘mixed’ invention (i.e. having technical and non-technical features) is not excluded from patentability as such, and making the subsequent assessment of novelty and inventive step. Specifically, the area of law surrounding how the different technical and non-technical features should be considered when making those assessments is a matter that will need to develop in case law over time.
Analysis
As a UK-based patent attorney who carries out a very significant amount of work in the field of computer-implemented inventions, I am pleased with the judgement set out by the UKSC and believe that the rationale is both sound and this change in practice long overdue.
Slightly paradoxically, despite basing the exclusion assessment on the ‘contribution’ made by a claimed invention, the UKIPO assesses what this ‘contribution’ is prior to any prior art search taking place. In many software cases, the UKIPO find that the claimed invention is excluded and then simply refuse to carry out a search at all, leading to frustration and money wasted on search fees. I anticipate that this change in practice will prevent the UKIPO from making swift decisions to exclude inventions at the first hurdle, meaning that searches are more likely to go ahead.
I am hopeful that this means that those with software-based inventions can benefit from filing patent applications in the UK in the same way that those in other fields do. The UKIPO is a fantastic place for priority filings, being generally cost-effective and (relatively) fast at processing applications. In addition, having a UK patent can be beneficial for many reasons and it is typically quicker and cheaper to obtain UK patent protection via the UKIPO than the EPO. Many of our clients benefit from filing UK applications as a priority application and obtaining a prior art search in the first few months which can be used to decide whether to file internationally. This option has been unavailable to many software clients, but I hope that this changes now.
I do not believe that this is going to lead to an ‘open season’ for getting spurious software-based patents through the system. However, many of those with legitimate technical software-based inventions have found the UKIPO to be a hostile environment – I am optimistically cautious that we will start to see a shift toward a sensible and pragmatic position where inventions that certainly ‘feel’ technical are not dismissed out of hand and are given a fair shot at patentability.
Stay tuned for future updates as the law in this area develops.
As a Partner at Acorn IP, Sam specialises in technologies relating to electronics, software, and engineering.
You can get in touch with Sam at: sam.cleary@acorn-ip.co.uk
