The Impact of UKIPO Examination Guidance for CIIs on Inventive Step Assessment

The UK Intellectual Property Office (UKIPO) has issued new guidance for the search and examination of UK patent applications for computer-implemented inventions, including inventions relating to AI: Search and Examination of UK Patent Applications under the Patents Act 1977 (as amended) - GOV.UK.

The guidance comes in view of the UK Supreme Court judgment in the ongoing ‘Emotional Perception’ case, which is now back in examination: Emotional Perception AI Limited (Appellant) v Comptroller General of Patents, Designs and Trade Marks (Respondent) - UK Supreme Court

The guidance confirms that UK Examiners should follow the interpretation of section 1 of the UK Patents Act relating to assessing patentability of a claimed invention adopted by the Supreme Court in the Emotional Perception judgment. In particular, UK Examiners should no longer apply the so-called ‘Aerotel test’ to determine whether a claimed invention relates solely to subject matter excluded from patentability.

More specifically, UK Examiners should follow a three-step approach – that includes a first hurdle, an intermediate step and a second hurdle – in line with the approach taken at the European Patent Office (EPO) for assessing patentability. For computer-implemented inventions, the first hurdle can be trivially overcome by reciting ‘any hardware’ in the patent claim, e.g. reciting that method steps are performed by a computer.

The intermediate step involves identifying the features of a claimed invention that contribute to the technical character of the invention as a whole. This should involve a feature-by-feature analysis of a claim. It is possible that a feature that is non-technical in isolation nonetheless contributes to, or interacts with, the technical subject matter of the claim.

The second hurdle then involves assessing whether the claim is novel and involves an inventive step. While the guidance is that implementation of the first hurdle and intermediate step will likely follow the EPO’s implementation of the corresponding steps, this is not the case for the second hurdle. In particular, following the Supreme Court judgment, the guidance indicates that UK Examiners should continue to follow the established ‘Pozzoli approach’ for assessing inventive step rather than adopting the EPO’s problem-and-solution approach.

While this difference in test for assessing inventive step between the UKIPO and EPO applies to patent applications relating to any subject matter, it may impact how ‘technical contribution’ or ‘technical effect’ of a claim is considered by Examiners and practitioners differently between the two offices for the inventive step assessment.

For the problem-and-solution approach at the EPO, a technical effect of the novel features of a claim over the closest cited prior art is used to formulate the objective technical problem to be solved. It is then considered whether the person skilled in the art, starting at the closest prior art and faced with the objective technical problem, would modify the closest prior art in an obvious manner to arrive at an arrangement/method that anticipates the claimed subject matter.

For the Pozzoli approach at the UKIPO, the inventive concept of the claim needs to be identified. For computer-implemented inventions, only technical features of the claim can be taken into account for the assessment of inventive step. Paragraph 106 of the Emotional Perception judgment has suggested that the inventive concept may correspond to the technical character of the claim, viewed as a whole, that is considered in the intermediate step. It then needs to be considered whether what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim.

Firstly, it is therefore noted that, for the purposes of inventive step assessment, the ‘inventive concept’ of a claim at the UKIPO will be different from a ‘technical effect’ of a claim at the EPO. This is because the technical effect at the EPO is formulated with reference to the closest prior art, whereas the inventive concept at the UKIPO is formulated without reference to prior art. It remains to be seen whether, in practice, this will lead to any difference of outcome between the two offices for computer-implemented inventions where the focus on what is and is not ‘technical’ comes under close scrutiny.

Secondly, whereas ‘technical effect’ at the EPO typically relates to what the novel features of a claim achieve, i.e. what the benefits are, rather than to the claim features themselves, ‘inventive concept’ at the UKIPO often is phrased as a combination of both claim features and their effect, e.g. the inventive concept lies in key features A, C and F, leading to the benefit/effect of X. The ‘inventive concept’ of a claim as is typically meant at the UKIPO does not therefore seem to quite correspond to just the technical character of the claim, viewed as a whole, but rather to one or more key technical features of the claim combined with the alleged beneficial technical effect. Indeed, in order to perform step 3 of the Pozzoli test – which requires a comparison of differences between the state of the art and the inventive concept – features of the claim contributing to the inventive concept, and not just their technical effect, are needed to ensure that the comparison is between features rather than trying to compare features and effects.

Overall, the new guidance is a welcome move to bring the UKIPO’s approach closer to that of the EPO, which tends to bring relatively predictable outcomes for applicants.

For a concise overview of what the new guidance means for applicants, read:  Practical Implications of the New CII Guidelines for Applicants.