Emotional Perception: unsuccessful return to the UK IPO

The UK Intellectual Property Office (UK IPO) has refused Emotional Perception AI’s remitted application, the latest chapter in a case that has travelled from the UK IPO through the High Court, Court of Appeal and Supreme Court and back again.  In its decision, the Hearing Officer held that, once the features not contributing to technical character were set aside, what remained was “[c]omputer hardware running a program that selects and outputs a file”, which is obvious over common general knowledge.

The decision is one of the first to apply the Supreme Court’s guidance in Emotional Perception from earlier this year, as discussed in our article here.

The decision

After the Supreme Court’s judgment, departing from Aerotel and aligning UK law with European Patent Office (EPO) practice as set out in G 1/19, the question for this application shifted from one of patentable subject matter to that of the “intermediate step” and inventive step.

As part of this assessment, the Hearing Officer considered it “helpful … to define the technical character of the claim before performing the intermediate step”.  At its simplest, this was found to be “[c]omputer hardware running a program (the ANN [artificial neural network]) that selects and outputs a file”.  The Hearing Officer accepted that “[t]he key is what the invention actually achieves in the real world”, and therefore provisionally expanded this to a program that “selects and outputs a ‘semantically better’ file”.  The case then reduced to the question of whether outputting a “semantically better” file provides a technical result.

If the answer were yes, the Hearing Officer was “confident that the current application would be inventive over the prior art”.  However, reading “semantic” in light of the description as the subjective, emotional meaning a human gives to a thing, the Hearing Officer arrived at a negative answer.  In reaching this conclusion, the Hearing Officer found that the output file is “not found faster, nor using less computing power than would be done in prior art systems” and is “better only in that a human being might say it was a subjectively better result.  I am not convinced that that is enough to be considered a technical effect”.

The details of the ANN’s learning objectives, the key aspect of the applicant’s case, were therefore “ineligible differences” and the application was refused for lack of inventive step.

Same law, different method?

The decision follows another Hearing Officer decision in July, FLIR Belgium BV, which was the first to apply the Supreme Court’s guidance.

The two Hearing Officer decisions state the applicable law in very similar terms, including the Duns principles A–F, the “any hardware” test, the intermediate step, and the Pozzoli test for inventive step.

In FLIR, the Hearing Officer took the view that the intermediate step “requires a feature-by-feature analysis”.  The relevant claim was broken into a number of labelled features, and each was assessed in turn for whether it contributed to a broadly conceived technical character.  Three features were filtered out in this process before turning to the relevant prior art.  Several features previously struck out by the examiner were found to contribute, and the application was remitted to the examiner for a full Pozzoli analysis.

In Emotional Perception, by contrast, the Hearing Officer started by seeking to distil what the invention as a whole achieves as part of “determining the technical character of the claim, as a whole, and deciding which features of the claim contribute to it”.  That is, the Hearing Officer in Emotional Perception took a more focused reading of “technical character” within the context of the intermediate step, as compared to that taken in FLIR.

Although the formulation still calls for going “through each feature of the claim in turn”, no feature-by-feature analysis was undertaken: once the technical character was determined, the training features fell away, and the conclusion on inventive step followed.

In this regard, the “technical character” as used in the Hearing Officer decision in Emotional Perception is more akin to the Pozzoli “inventive concept”.  As such, the framework here appears to integrate the intermediate step into the Pozzoli inventive step test.

Indeed, the Hearing Officer observed that step 2 of the Pozzoli test (identifying the inventive concept) “has effectively been done already” as part of the intermediate step.

Whether one approach will prevail over the other remains to be seen.  In FLIR, the Hearing Officer highlighted the Supreme Court’s guidance that “it is open to the UKIPO … to adopt any appropriate method of identifying the technical character of the invention, viewed as a whole, as the necessary first part of carrying out the intermediate step”.  This suggests that the UK IPO may take a flexible approach as to how to apply the intermediate step, at least until the dust settles.

What next for Emotional Perception?

The Hearing Officer decision brings the proceedings at the UK IPO to a close.  Emotional Perception AI may, however, appeal to the High Court, as it did after the original refusal in 2022; it has 28 days to do so.  An appeal would give the courts their first opportunity to determine how the intermediate step should be implemented in the UK, and perhaps which of these two approaches is to be preferred.

The corresponding European application was abandoned after the examining division objected on inventive step grounds.  The Hearing Officer found it “reassuring that the body that is the most familiar with the Duns approach reached an identical conclusion”.

We will continue to report on developments.