There has been some excitement over the past few months among the very niche community of UK patent attorneys specialising in AI, following the High Court judgment of Emotional Perception. I wrote about the case here and it was also written about in a slightly more approving way by one of my work colleagues. It was inevitable while the judgment still stood (an appeal is currently pending with a hearing at the Court of Appeal scheduled for May 2024) that attempts would be made to get applications relating to AI through the UK IPO that would previously have been considered unpatentable, particularly given the change in practice in light of the judgment. At least one such attempt has been made, which has resulted in the decision last month in the case of Conquest Planning Inc. (BL O/0259/24).
The application, GB2311361.6, was a divisional of an earlier UK application that was a national phase entry of PCT application PCT/CA2020/050275. The abstract on the cover page of the published PCT application is probably enough for the reader to have a good guess as to where this, originally Canadian, application was going to go in Europe. This described the invention as "a financial planning system that comprises a Strategic Advice Manager (SAM) module that utilizes an artificial intelligence (AI) module to automate and optimize the financial planning decision-making process". Unsurprisingly, in decision BL O/988/23 from 24 October 2023, the application was refused because the hearing officer found the claimed invention to be a tool for recommending financial plans in which an AI module was used. This related entirely to an administrative process that was computer-implemented but made no improvements to a computer in a technical sense. This resulted in the invention being found to be excluded under section 1(2) for being a method for doing business and a program for a computer as such. The fact that the invention made use of a computer program did not impart any technical contribution, following the usual reasoning from Aerotel/Macrossan and AT&T/CVON.
Probably expecting this negative result, the applicant had already arranged for a divisional to be filed in July 2023. This application then faced similar objections from the examiner and eventually (although rather more quickly this time, due to the compliance period coming up) came before a hearing officer after the examiner decided that the claims on file as of 8 December 2023 were not patentable for essentially the same reasons as were already provided in the earlier decision. By that time, however, the Emotional Perception judgment had come out, so the applicant ran the argument before the hearing officer that, because the application related to AI, the change in practice should be taken into account. A question then was whether the applicant was trying to have a second go at getting the same invention patented. The issue to be considered was what bearing the previous decision had on the divisional application. The hearing officer noted that, in a previous decision BL O/033/09 (Rajesh Kapur), the principle of estoppel was found to apply to ensure that litigation was final and could not be subsequently fought all over again. The Patents Hearing Manual notes at points 1.96 and 1.97:
"Estoppel by record (doctrine of res judicata) applies where a relevant judgment (and that includes a decision of a tribunal such as the comptroller) has already been given. The judgment stands forever, as between the parties unless it is modified by the normal course of appeal (in which case the modified judgment stands in its place). For example, in an infringement action (Poulton v Adjustable Cover & Boiler Block co (1908) 25 RPC 529 the plaintiff was awarded damages which were ordered to be assessed and paid by the defendant in due course. However, before the damages had been paid, the defendant caused the patent to be revoked on the basis of new evidence. Accordingly, he argued that he need no longer pay the original damages since the patent must, at the time of the first action, have been invalid. He was however held to the terms of the first decision. This judgment although old remains good law - see Coflexip SA v Stolt Offshore MS Ltd (No 2) [2004] EWCA Civ 213, [2004] FSR 34, discussed below with regard to abuse of legal process. See also Unilin Beheer BV v Berry Floor NV and Others [2007] EWCA Civ 364 in which it was decided that a later finding of invalidity of an EP(UK) patent in an EPO opposition would not disturb a finding in the UK Courts that the patent was valid and infringed as between the parties in the UK action, so that any damages must still be paid.
There are two types of estoppel by record. The first is "cause of action" estoppel where the same cause of action lies in a final judgment (cf the example given above). The second is issue estoppel which, per Lord Denning in Fidelitas Shipping Co Ltd's v vlo Exportchleb [1966] 1 QB 630 at p640, applies where, within one cause of action, there are several issues raised which are necessary for the determination of the whole case. Once an issue has been raised and distinctly determined (even if the question was in fact not the subject of any dispute or argument) then as a general rule neither party can be allowed to fight that issue all over again. But not always - cf, for example, Rose Bro's (Gainsborough) Ltds Appln [1960] RPC 247 and Hodgkinson & Corby Ltd & anr v Wards Mobility Services Ltd [1997] FSR 178. Cinpres Gas Injection Limited v Melea Limited [2008] EWCA Civ 9 contains a discussion of the difference between cause of action and issue estoppel - see paragraphs 66 to 77. Estoppel was not established in that case, the judgment holding that there had been perjury by a witness closely identified with one of the parties; (see paragraphs 105 to 107), and adoption of the fraud by the party itself; (paragraphs 108 - 120)."
As a result, the hearing officer found that the applicant was prevented from asserting that the claimed invention was outside of the exclusions from patentability if the scope of those exclusions remained unchanged. Did the Emotional Perception judgment change the scope of the exclusions though? The judge had found that a system for recommending data files using an artificial neural network (ANN) was not excluded as a computer program. The claimed invention in this case involved the step of training an artificial intelligence to develop a financial plan, which the applicant argued was sufficient to determine the question of patentability in their favour. The hearing officer, however, found that this did not relate to a trained ANN or to the training of a ANN but instead to a generic AI. It could not therefore be said to engage the exclusions raised in Emotional Perception. Given the identical facts and identical law, the previous decision must be followed. The application was therefore refused.
The lesson here then is that, although there may have been a change in practice in light of Emotional Perception, the effect while the judgment stands is likely to be very limited, being specific to the question of whether an ANN can be considered to be a computer program as such. If the claimed invention does not relate specifically to an ANN, the change in practice is not going to be of much use. Another point to note is that the other exclusions, in particular that relating to business methods, will still apply, so even if the computer program exclusion is avoided there may be others that can still prevent a patent being granted.
