A Supreme Court Fudge - 6 Steps for Emotional Perception

As everyone knows by now, the Supreme Court handed down its judgment in the Emotional Perception case last week. There is plenty of commentary around on the judgment itself, so I won't go into the detail of it here. For background, I wrote about the case at the UK IPO stage in the September 2022 CIPA Journal, at the High Court here and at the Court of Appeal here. In brief, the invention is about the use of an artificial neural network (ANN) to compare two media files to determine how similar they are semantically, the main described application being for recommending a music track based on similarities with other music tracks. The application was refused by the UK IPO Hearing Officer in June 2022. The applicant then appealed to the High Court, which overturned the decision (and in my opinion got it completely wrong - see here for why). The Court of Appeal then reversed this finding (correctly in my view) and the Supreme Court has upheld in part the Court of Appeal's decision but decided that now is the time to abandon the Aerotel approach for determining patentability. What this is to be replaced with, however, is not yet clear. 

A new hurdle and some steps. 

Upon finding that the EPO's "features which contribute to the technical character" approach to assessing patentability, as set out on G 1/19, was to be preferred to the Aerotel "technical contribution" test, rather than setting out a new test the Supreme Court decided to send the case all the way back to the UK IPO Hearing Officer to consider the matter. Given that the assessment of inventive step as set out in Pozzoli was explicitly not overturned, the Hearing Officer now has the task of figuring out how to put together (in what the UK IPO argued would be a "Frankenstein monster") a test that takes parts of the EPO's problem-solution approach as applied to patentability and combines these with the Pozzoli test for inventive step. Presumably novelty will also need to be assessed somewhere along the way. How to do this, however, is not at all obvious, and no suggestions were made as to how to do this from either the applicant's representatives or from the contributions made by CIPA and the IP Federation. Regardless of what the IPO now come up with, the result will inevitably be further discussion and arguments about whether the test is correct and how to apply it. It may even end up in a further appeal that could go all the way back up to the Supreme Court, although more likely will end up at the Court of Appeal again, where a new test will be settled. All this is bound to take some time. 

For the time being, we have to try to figure out what all this means in terms of the test we have to apply. To a first approximation, given that the main gist of the Supreme Court's decision was to make the UK approach more in line with that at the EPO, it would be reasonably safe to assume that following the EPO's problem-solution approach will more or less work, although some parts will need to be adjusted to align with UK law. Taking the relevant parts from the EPO approach, as set out in T 258/03 (Hitachi), T 641/00 (Comvik) and T 154/04 (Duns Licensing) and combining this with the Pozzoli four-step test for inventive step, a possible test could be something like the following.

1. Construe the claimed invention and determine its technical character. This is a necessary first step because it establishes whether the claimed invention gets over the Article 52(2) / Section 1(2) 'hurdle', as for example set out in Hitachi. This is a low bar, as the presence of any hardware (even pen and paper) will enable a claimed invention that would otherwise be excluded to get over the hurdle. The step is also necessary to establish what the nature of the technical character of the claimed invention is, as this will need to be looked at later. 

2. Determine the closest prior art. This is step 1 of the Pozzoli test, and includes an assessment of the identity of the skilled person and their common general knowledge. It also corresponds to the first step of the problem-solution approach, although we are not going to use this to assess what technical problem is to be solved. 

3. Determine the features of the claimed invention that contribute to the technical character. This is a requirement that was set out in Comvik, which applies to so-called 'mixed' inventions, i.e. those comprising a mixture of technical and non-technical features. 

4. Identify the inventive concept. This is step 2 of the Pozzoli test, but with the difference that only those features that contribute to the technical character (step 3) can contribute to the inventive concept. This requirement is set out in part (F) of the summary in G 1/19 of Duns (point 30 of the reasons), in which features that do not contribute to the technical character of the invention are to be ignored for assessing both novelty and inventive step. 

5. Identify what, if any, differences exist. This is step 3 of the Pozzoli test, but again adapted such that only those features identified as being part of the inventive concept can be taken into account. If there are no such features, the claimed invention is not patentable. 

6. Would these differences be obvious to the skilled person? This is the final step of the Pozzoli test, in which any differences, if these have been identified at step 5, are assessed in light of what the skilled person knows and would find obvious. Even if an invention has been found to have features that do contribute to the technical character, they could still be found to be obvious in light of what the closest prior art is and what the skilled person is presumed to know. 

The above is only a first pass at what I guess the new test will need to involve. The details and the particular order in which some of the steps are taken may vary (steps 1 and 2, for example, could probably be done the other way around) but I think all of these steps will be needed in some form to take into account everything required for an assessment of patentability that also includes novelty and inventive step. 

Although all the Court of Appeal level decisions on patentability leading up to Aerotel are to be abandoned, some other features of existing UK case law may usefully be taken into account, for example the 'signposts' set out in AT&T/CVON (not mentioned in the Supreme Court decision), which could apply when considering step 3. Although these signposts were provided to help decisions on the final Aerotel step, i.e. whether the contribution is technical, they should also be useful for assessing whether any feature contributes to the technical character of the invention since similar criteria apply. 

We will have to wait and see what the UK IPO come up with, but I think it will have to be something along these lines. If they do come up with something similar, in the particular case in question my educated guess is that the claimed invention will probably not get past step 3 or may fail at step 5. I think it very unlikely that it will get all the way to step 6. I also think that, whatever happens, the boundary of what is patentable in the UK will not get significantly extended as a result.

G 1/25 Amicus Briefs - A Brief Summary

Following up from my earlier post about the referral to the Enlarged Board, now that the period for filing written submissions (or 'amicus briefs') has passed, I have reviewed the various submissions that have been filed. Some are very long, and I have reviewed many of them only briefly, although I hope that the EB will review each of them in detail because there are some important points raised. For now, it is interesting to note that, although there is no consensus on the issue (otherwise there would be no need for a referral), there appears to be a strong majority view that Question 1 should be answered with a 'no'. This is, however, not about a democratic vote and the EB will have to come to their decision based on what they think is correct, not what the majority view may be.

Based on a total of 39 submissions filed and visible on the EP register as of today (4 February 2026), including a couple that appear to have been filed late, 27 have suggested an answer of 'no', while only 8 say 'yes'. A few others either provide no answer or are somewhat vague about what the answer should be. The table below is a list of all submissions that I have found (excluding those from the parties to the case), with their proposed answers (where this is discernible), and the pie chart here shows the answers to Question 1.

Many of the submissions make interesting points, some of which are expressed in stronger terms than others, while others carefully sit on the fence or even fail to come to any clear conclusion. It should be remembered that Question 1 does demand a clear answer. It either is, or is not, necessary to comply with the requirements of the EPC to adapt the description to amended claims so as to remove an inconsistency. While there are certainly arguments to be had either way, including what is meant by an 'inconsistency', a clear 'yes' or 'no' is in the end required because it is of primary importance for the EB to be able to come to a clear conclusion on what the EPC actually requires applicants and proprietors to do, and what the EPO is permitted to require them to do. Sitting on the fence, or coming up with reasons based on vague principles that are not actually set out in the EPC, is simply not good enough. 

It would take me far too long to set out in detail all the arguments put forward in the various submissions, most if not all of which have already been made many times over the past few years. Some of the submissions are, however, in my view worth looking at in more detail because they raise interesting points, are well written, or are provocative one way or the other. The following is a very brief selection from the submissions, with links that should hopefully take you directly to the document on the EP register if you want to see more. 

In characteristic American style, AIPLA put forward a combative set of submissions, the main point being that adaptation of the description is an "administrative construct developed originally as a housekeeping measure". This seems to get to the core of what has happened over the past few years, as the EPO has become more strict on adapting the description to the claims. A requirement that was previously typically only one that involved adapting the summary of invention to say something like "the invention is defined in the claims" has gradually become more and more onerous on applicants where the current requirements (although inconsistently applied) force applicants to comb through the entire specification to adjust wording wherever the word "invention" or "embodiment" is used, or even delete entire sections, to appease the examiner. This view is concurred with by Bardele Pagenberg, who state that "Using the concept of consistency as a yardstick for support is in our view wrong and not in accordance with the EPC", and also refer to adaptation of the description being a housekeeping issue. Others further support the point by referring to adaptation of the description being a burden on applicants, with BIA (the UK Bioindustry Association) expressing concern with compulsion, where examiners enforce a mandatory requirement to adapt the description, causing additional cost and uncertainty. Canon Inc go further, saying that "the practice of aligning the description with the claims accepted for grant serves no useful purpose", a point that is matched by the submissions from JEITA and Richardt Patentanwalte, while Ericsson state that "it is not the purpose of opposition and opposition appeal proceedings to tidy up the description". 

Greenwoods make a couple of important points, one being that "if the claims are clear despite the description no amendment to the description appears to be necessary", another being that "it should be up to the applicant proprietor to decide whether to amend the description or the claims to remove inconsistencies that cause genuine difficulty in determining the scope of the claims" (a point which I also made in my thoughts, which were expressed in the submissions from UNION-IP). Another important point is raised in submissions from the IP Federation that support under Article 84 EPC is about "ensuring the invention is sufficiently described to justify the scope of the claims. It does not extend to the reverse" (which is similar to my point about the requirement being unidirectional). A similar point is made by the pseudonymous submissions from "Jackson Lamb", who states that "The support requirement should not be interpreted to require a one-to-one correspondence between the claims and the description". 

A common theme, of course, with all of the above, among others, is the view that there is no requirement of the EPC that mandates amendments to the description. This is, however, not shared by some of the other submissions. The strongest submissions from those who answer 'yes' to Question 1 appear to be from Bugnion, Patentanwaltskammer and (unsurprisingly) from the EPO President, all of which refer to Article 84 EPC as being the primary basis for setting a requirement for description amendments. Bugnion argue that "supported by the description" in Article 84 sets a "mandatory requirement on the description to disclose a solution that is consistent and not in disagreement with the claims", while the EPO President goes further with a public policy type argument about the purpose of Article 84 EPC, which is apparently "to ensure that the public is not left in any doubt as to which subject matter is covered, and which is not". Patentanwaltskammer further argues that "Once it is accepted, following G 1/24, that the description forms an integral part of the framework for claim interpretation under Article 69 EPC, the consistency of the patent text becomes mandatory. A patent text that contains contradictory statements cannot reliably fulfil its function as a basis for interpretation of the claims". This does, however, raise the question of whether it is the patent as granted that should be used for interpreting the claims or, as some would argue, the patent application as filed. 

The submission by Samson & Partner, on behalf of Apple Inc, raises the possibility again of Angora cats (see here for some of my comments relating to this fictional animal), arguing that they "should not be unnecessarily bred and nurtured" by not amending the description to match the claims. Another large patentee Roche, however, argues that this should not be the job of the EPO, and that "the Boards must apply legislation, not act as legislator", also referring to G 1/24. 

Finally, there are a few that stand out for their fence-sitting and vagueness, some of which fail to come to any clear answer to Question 1. Most disappointingly (for me at least) are those from CIPA, who fail to answer with a clear 'no' and instead state that "It is not generally necessary for the description to be adapted to the allowable set of amended claims" (my emphasis). Well, is it or isn't it? Another from Martin Wilming refuses to answer the question at all, and just refers to a previously published article that is clearly against the idea of mandatory description amendments, in which case it is odd that a clear answer is not provided. 

Question 1 is, of course, the most important one to answer. For those that answer 'no', Question 2 then obviously falls away. For those who answer 'yes', however, it is useful to note the justifications that are made for support in the EPC. The most common is Article 84, while other provisions such as Rule 42(1)(c), Rule 48(1)(c) and Article 69 are also mentioned. Question 3 is largely of little concern, with the vast majority simply stating that the same rules should apply in examination as for opposition (although with the proviso that Article 84 works differently, given that it is not a ground of opposition). 

In summary, I think the EB have plenty of arguments, some of them good, to review and work with. I hope they do take them all into account and come up with the correct decision. We may have a while to wait though, and I expect the decision when it does come is going to be a very long one.

Amicus	Question 1	Question 2	Question 3
AIPLA	No	None	No
Bardele Pagenberg	No	None	No
Bayer AG	No	No answer	No
BIA (UK BioIndustry Association)	No	Not applicable	No
Bugnion	Yes	A84, R42(1)(c), R48(1)(c)	No
Canon Inc.	No	No answer	No
CIPA	Vaguely no - “not generally necessary”. Does not answer the question.	No answer required	No
CPI	No	No answer needed	No
D.X. Thomas	Yes	Article 84 and Rule 42(1)(c) EPC	No
EFPIA	No	No answer needed	No
EP&C Patent Attorneys	Yes	A84, A69 EPC	-
epi	No	A84 does not provide legal basis	No
EPO President	Yes	A84, R42(1)(c), R48(1)(c)	No
Ericsson	No	None	No, except for additional focus on A84 during examination
ETH Zurich	No	None recognised	No
FEMIPI	No	No legal basis	No
FICPI	No, provided the subject-matter does not explicitly refer to the claims.	No answer	No, but applicant/proprietor should be given an opportunity to amend.
Francis Hagel	No	No answer	No
Greenwoods	NO (in capitals and bold)	No requirements of the EPC require such adaptation	No
GRUR	No answer	No answer	No answer
IP Federation	No	No provision in the EPC that mandates adaptation of the description	No
IPO (Intellectual Property Owners Association)	No	No requirement of the EPO necessitates such an adaptation	No
“Jackson Lamb”	No	No answer needed	No
Japan Intellectual Property Association	No	Does not apply	No
JEITA	No	No answer necessary	No
Martin Wilming	No answer	No answer	No answer
Michael Stadler et al	No	No answer	No
Michael Snodin	No	No need to answer	No
Ordine Dei Consulenti in Proprieta Industriale	No	No answer needed	No
Patentanwaltskammer	Yes	A84, A69	No
Patentwerk B.V.	Yes	A84, 82, 53, 52(2) EPC	-
Peter De Lange	Yes	R48(1)(c)	No
Richardt Patentanwälte	No	No answer	No
Roche	No	No basis	No
Roy Marsh	No	No answer	No
Samson & Partner (Apple Inc.)	Yes	A84 (?)
Siemens	No	No answer needed	No
UNION	No	No answer needed	No
VPP	No	No answer	No