Perceptions of Patentability: Are artificial neural networks and AI patentable?

In these heady days of the dawn of the generative artificial intelligence era, stories, controversies and hype are aplenty. In the patent sphere, while the law on inventorship by non-human inventors is now largely settled (at least for the timebeing – see our earlier comments on this here), the UK High Court recently caused a stir by finding an invention which was heavily reliant on an artificial neural network (ANN), patentable. This article concerns the subsequent appeal of that decision to the UK Court of Appeal, and the potential relevance of that decision to Australia and New Zealand.

Background

Emotional Perception AI Limited (Emotional Perception) developed an invention which was a system for providing media file recommendations to a user. Rather than categorizing and recommending music by genre, eg. rock, folk, classical etc. the system was able to offer suggestions of similar music in terms of human perception and emotion, irrespective of the genre of music. The invention effectively arrives at these suggestions by passing music through a trained artificial neural network.

Before the UKIPO, the patent application was rejected on the basis that it was deemed to be a computer program “as such”, and thereby prohibited from patentability under section 1(2) of the Patents Act 1977.

Emotional Perception disagreed so appealed to the UK High Court. The judge, Sir Anthony Mann, allowed the appeal ([2023] EWHC 2948 (Ch)) on the basis that no computer program was involved at all, instead focusing on the invention as a piece of hardware, and therefore that the exclusion had no application. The judge also held that even if the provisions did apply, the subject matter was not excluded. The Comptroller appealed to the Court of Appeal.

Decision on appeal

The Court of Appeal addressed two questions, firstly whether s1(2) of the Patents Act 1977 applied to ANNs, ie. whether an ANN is or comprises a computer program. And if so, how that exclusion pertained to the patent application at issue.

The Court of Appeal by way of background briefly explained ANN systems, noting that an ANN is effectively a machine which processes information, taking a set of input information, applying weights, bias and function based on training data to produce output information.

The judgment of the Court by Birss LJ referenced the well-known cases Aerotel and AT&T. Birss LJ returned to first principles, considering what a “computer program” was - instructions for a computer to do something - and determining that its author, human or otherwise did not dictate whether or not it fell within the excluded subject matter. On question one, Birss LJ then concluded: “However it is implemented, the weights (and biases) of the ANN are a program for a computer and therefore within the purview of the exclusion.”

Birss LJ went on to consider question two, noting that merely because the invention incorporated a computer program did not make the invention unpatentable. It must be considered whether the invention related to a computer program as such in order for it to be excluded.

Although the ANN performed a tangible step in sending a recommended file to a user, the assessment of the song’s semantic quality before sending it was a subjective and cognitive assessment, and this was not considered to be sufficiently technical in order to turn this into a system which produces a technical effect outside the excluded subject matter.

Following the decision, the UK IP Office has now published a guidance note for examination, confirming that: “patent examiners should treat ANN-implemented inventions like any other computer implemented invention. Examiners should use the Aerotel approach to assess whether the claimed invention makes a contribution, which is technical in nature.” However, the guidance note has also confirmed that patentability of an ANN is available where the technical contribution is made in the sense of making the ANN a “better computer” in the context of the AT&T signposts and reinforcing the relevance of these in determining patentability of computer-implemented inventions.

Patentability at the USPTO

Further illustrating the currency and future importance of this issue, the US Patent and Trademark Office (USPTO) has also recently issued a guidance update on patent subject matter eligibility to address innovation in critical and emerging technologies, especially artificial intelligence (AI). The updated USPTO guidance provides examples of the application of the existing USPTO law and practice, with new specific guiding examples which incorporate ANNs/AI.

In view of the decision in Emotional Perception, it is interesting to note that a 2020 USPTO report on “Public Views on Artificial Intelligence and Intellectual Property Policy,” noted that: “[a] majority of commenters agreed that AI is viewed best as a subset of computer-implemented inventions”. That appears to be the approach most likely to be taken in most jurisdictions and would seem to accord with the general nature of ANNs/AI as clearly set out by Birss LJ in Emotional Perception.

Application to AU and NZ

While it is always difficult to hypothesise, if and when similar cases arise in Australia or New Zealand, we would expect a similar result to the UK Court of Appeal’s decision in Emotional Perception. In recent times, both jurisdictions have been somewhat reluctant to grant patents for computer implemented inventions, particularly where the invention is not tied to an external output or tangible result.

In New Zealand, the text of Section 11 of the Patents Act 2013 takes a strong lead from the text of the UK and European law. Section 11 has not yet been considered by the New Zealand Courts, however we expect decisions such as Emotional Perception to be highly persuasive. In the meantime, hearing decisions of IPONZ Assistant Commissioners provide the best guide to what computer-implemented inventions are deemed patentable in New Zealand. The approach to section 11 in these cases has been varied, with perhaps the most unifying feature being that all but one of the 11 applications considered in these hearing cases have been rejected for relating to a computer program as such!

That aside, Section 11(3) of the Patents Act 2013 purports to “codify” the UK Aerotel case, however the codification of the Aerotel test in section 11 doesn’t require the fourth step of being “technical”. This has contributed to the lack of consistent approach to this issue so far, leaving decision makers uncertain as to which, if any, overseas case law should be followed and what weight it should be given. We consider that the AT&T signposts are highly relevant and useful, highlighting that if there is an effect observable outside of the computer, or the computer is improved to operate in an enhanced manner, the invention must then be more than a computer program as such. This approach is effectively consistent with most other jurisdictions. Failure to recognize the significance of a technical effect risks unduly reducing the scope of patentability in New Zealand in a way that is inconsistent with comparative jurisdictions and trading partners, making this an undesirable approach for multiple reasons. We await a decision of the New Zealand Courts on this issue.

In Australia, there is not an explicit legislative prohibition on computer programs (“as such”) as in the UK and NZ. Instead, the question of patentability is decided with reference to whether the invention constitutes a manner of manufacture. Given its corresponding reliance on judicial interpretation, the situation is complicated by the split decision of the High Court in Aristocrat (see our article here), which did not clarify the law on patentability as was hoped. This has left Australian law in a position where patentability is not clear cut and assessed on a case-by-case basis, but generally being recognized where the invention solves a technical problem, whether that technical problem is within the computer, outside the computer, or in the functioning of the computer.

We await further jurisprudence on inventions involving generative AI systems and neural networks in Australasia. In the meantime, patentability of AI-related and computer-implemented inventions remains a case-by-case issue. Please contact us if you have any questions on patentability or patent practice generally in Australia or New Zealand.