Mark Chacksfield KC and Edmund Eustace represented the appellant, EPAI, in its successful appeal against the refusal of its AI-based patent application under the exclusions from patentability under s1 of the Patents Act 1977.
In a decision which will have important ramifications for not only the AI industry, but across the whole of the scope of the exclusions, the Supreme Court overturned the longstanding ‘contribution’ approach set out in Aerotel Ltd v Telco Holdings Ltd [2006] EWCA Civ 1371, preferring instead to adopt the ‘any hardware’ analysis of the EPO set out in G1/19.
The Supreme Court held that there was real force in the EPO’s emphatic rejection of the Aerotel contribution approach in T154/04 Duns, which were impliedly endorsed by the Enlarged Board in G1/19, and held that the question of whether there was an ‘invention’ under the Act should not be mixed up with an assessment of whether that invention is patentable – i.e. possesses novelty, inventive step and industrial application.
The decision therefore adopted the EPO’s ‘any hardware’ approach to the exclusions, but went out of its way to explain also the important ‘intermediate step’ which must be performed before patentability can be assessed – namely properly to identify all of the features of the claim, taken as a holistic whole, which contribute to the invention. The emphasis on ensuring that the claim is considered as a whole is of importance in aligning the UK approach with that of the EPO, and to avoid the risk of ‘salami slicing’ inventions in a manner unfair to patentees.
The Supreme Court further agreed with the Court of Appeal in that an ANN was a program for a computer, but it disagreed with their expansive reasoning, which potentially captured a range of other technologies, and which had caused substantial industry concern.
Mark and Edmund were instructed by Bruce Dearling of Hepworth Browne.
The Supreme Court summary page is here.