Technology companies got a major boost from the decision that an artificial neural network, including hardware, shouldn't be automatically barred. But lawyers predict that the proportion of software patent applications which the U.K.'s Intellectual Property Office grants are likely to remain unchanged.
"Even though the overall approach has changed, I don't think we are going to see a big change in the number of UK patents that are granted for software," Michael Nielsen, EIP LLP partner, said.
The Supreme Court unanimously ruled on Feb. 11 that the invention sought by Emotional Perception "includes hardware," therefore should not have been automatically refused.
The top court also replaced the U.K.'s longstanding test for determining whether an invention is patentable with one that allows software patent applications that rely on "any hardware."
Lawyers immediately heralded the decision as a win for tech companies and said that the ruling positioned the U.K. as a more welcoming forum for AI innovation. But they also warned that the ruling might not make any significant change to the number of software or AI patents being granted.
"I'd almost go as far as saying perhaps it might not even change the number of cases granted, but it moves along to a more meaningful conversation that you're going to have," Ben Husband, partner at Carpmaels & Ransford LLP, said.
In moving past the "program for a computer" exclusion, tech companies will still need to overcome significant barriers preventing many software patent applications succeeding, lawyers say.
Tech companies might now avoid the "program for a computer" exclusion if their invention requires any hardware to function. But they will still need to prove their invention offers a "technical contribution."
"The challenge I think now will be … the intermediate steps at which you determine what the technical character of the invention and what kind of contributes to the technical effect," Husband said "And that, in my view, is almost as challenging as what the IPO was doing previously."
These inventions could also still clash with other exclusions such as those blocking patents for mathematical methods and ways of doing business, lawyers say.
Patent professionals are therefore not any more likely now to advise most clients to prioritize the U.K. patent filing process over securing British protections through the European Patent Office, unless budgets are tight.
"This isn't going to make me change my advice to clients," Nielsen said. "Which is excepting rare cases where budget is a real issue or where they really are a U.K. only company and don't care about anywhere else, then I would still go for protection in the U.K. via the European Patent Office."
But all eyes will now be on the UKIPO when it revisits Emotional Perception's patent application. It is due then to give further guidance on how it approaches the next steps of the patent application process now that the U.K. Supreme Court has adopted the EPO's standard for patenting computer-implemented inventions.
"There is a bit of room for divergence, but I think we're just going to have to wait and see how that goes and then that will then perhaps inform the advice to clients about whether or not they should favor the U.K. directly is trying to get protection for software in the U.K.," Nielsen said.
--Editing by Joe Millis.
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