11/02/2026
The UK Supreme Court released a bombshell decision today in connection with the Emotional Perception AI Limited application refused by the UK IPO as relating to unpatentable subject matter. The technology claimed in the Emotional Perception application operated to provide a music recommendation service, recommending an “output” music track based on its semantic and “emotional” similarity to an existing input track. Protection was sought in the UK under patent application GB2583455 and at the EPO with corresponding patent application EP3931721. The Supreme Court decision can be found here.
The key finding of the Supreme Court decision is the abandonment of the existing Aerotel v Telco and Macrossan’s Application approach (“Aerotel approach”), and adoption of the guidance set out in G1/19 of the EPO, when assessing the patentability of computer implemented inventions, which are otherwise broadly excluded from patent protection under Section 1(2) of the UK Patents Act 1977 and Art 52 of the European Patent Convention.
The decision is significant, because for a long time many practitioners in the UK have felt that the existence of a different test followed by the UK IPO and UK courts, compared with that followed by the EPO, has led to a lack of clarity and a non-level playing field for software innovators. Harmonisation with the EPO on this point is therefore welcome.
Key take-aways from the decision the Supreme Court decision are that the five judges concluded unanimously that the “Aerotel approach” which dates back to 2006 is now incompatible with the Convention and should be abandoned. It should be replaced by those parts of the G1/19 approach which implement the Enlarged Board’s interpretation of Article 52 of the Convention.
The Supreme Court further found that the UK IPO’s argument that the Aerotel approach and the G1/19 approach will always produce the same outcome in any given situation is not capable of proof and in any case is not a good reason for continuing with the approach in Aerotel. Adopting the approach set out in G1/19 will not involve overturning the approach to novelty and inventive step set out in the Pozzoli v Windsurfing case, and followed by the Supreme Court in Actavis Group PTC EHF & Ors v ICOS Corporation & Anor [2019] UKSC 15.
Following the G1/19 approach in the UK will mean assessing whether inventions implemented in software clear the “two hurdles” of the European test. The first hurdle is whether the claim contains any hardware. If it does then it cannot be excluded from patent protection solely on the ground of being excluded subject matter as such set out in Article 52 EPC. However the claimed invention must still satisfy the second hurdle of inventive step as set out under Article 56 EPC. For the second hurdle, only those claim features that are viewed as technical may make a contribution to inventive step. Claim features that are seen purely as administrative, organisational, or financial, for example, make no contribution.
Acknowledging the significant shift in approach, the Supreme Court noted that the Aerotel approach had specifically rejected the “any hardware” approach used to clear the first hurdle and so was not compatible with the EPO test. In G1/19, however, once the first hurdle was cleared, the consequence of the “any hardware” was dealt with by mention of the “intermediate step” between the two hurdles. The relevant passages of G1/19 are below:
38. It may be that a shift has taken place in the relative level of each of these two hurdles in the sense that it has become easier to clear the eligibility hurdle of Article 52 EPC (…) and more difficult to pass the inventive step hurdle of Article 56 EPC. As result of this shift, it could be said that there is now in effect an additional intermediate step to assess the “eligibility of the feature to contribute to inventive step”.
39. The two-hurdle approach for computer-implemented inventions actually entails three steps. Establishing whether a feature contributes to the technical character of the invention constitutes an intermediate step between assessing (i) the invention’s eligibility under Article 52 EPC, and (ii) whether the invention is based on an inventive step vis-à-vis the closest prior art.
This additional intermediate step serves as a filter for features contributing to a technical solution of a technical problem in view of the closest prior art. Only those distinguishing features can contribute to inventive step.
The Supreme Court offered guidance on how this the intermediate step may be employed in a UK context, but concluded that it would be inappropriate for them to rule finally on the patentability of the Emotional Perception case themselves. Since this would be the first time the intermediate step of the G1/19 approach had been applied in the UK, the Court have referred the case back to the specialist UK Patent Office Hearing officer to apply the guidance.
Conclusions
Bringing UK patent law into line with G1/19 decisions is a welcome step forward. Since the adoption of the UK Patents Act 1977, the approach of the UK IPO to computer software inventions was always intended to be harmonised with the EPO approach. Although the Aerotel approach, and the subsequent guidance (signposts) of the AT&T v CVON decision, had achieved much in terms of harmonisation, it had not quite gone all the way, and the resulting differences in law had led to a lack of clarity and possible a tougher deal for UK based innovators.
The UK IPO will now need to publish further guidance on how it will apply the teaching of G1/19 to UK patent applications. The guidelines of the EPO set out in some detail how this should be achieved and we look forward to further clarification.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
Emotional Perception AI Limited v Comptroller General of Patents, Designs and Trade Marks:
https://www.supremecourt.uk/cases/uksc-2024-0131
Actavis Group PTC EHF & Ors v ICOS Corporation & Anor [2019] UKSC 15:
https://www.bailii.org/uk/cases/UKSC/2019/15.html
UK Court of Appeal: Aerotel v Telco and Macrossan’s Application:
Aerotel Ltd. v Telco Holdings Ltd & Ors Rev 1 [2006] EWCA Civ 1371 (27 October 2006)
EPO Enlarged Board of Appeal G1/19 Decision:
https://www.epo.org/en/boards-of-appeal/decisions/g190001ex1
Section 1(2) of the UK Patents Act 1977:
https://www.legislation.gov.uk/ukpga/1977/37/section/1
Art 52(2) EPC:
https://www.epo.org/en/legal/epc/2020/a52.html
