17/07/2026
The UK Intellectual Property Office (UKIPO) has issued new guidance that significantly changes the way it will examine computer-implemented inventions (CII) and artificial intelligence (AI) under the UK Patents Act 1977. This guidance was issued in response to the Emotional Perception Supreme Court decision on AI patentability. The complex four-step Aerotel test for assessing excluded subject-matter is now formally abandoned. The UKIPO’s interpretation of the exclusions at Section 1(2) of the Patents Act is now aligned with EPO practice, specifically adopting the Enlarged Board of Appeal’s reasoning regarding computer-implemented simulations in G1/19 and the Comvik approach (T641/00).
For US patent attorneys in particular, who are familiar with the unpredictable nature of the Alice/Mayo framework at the USPTO, the UKIPO’s new approach is something different. As European and UK patent attorneys at Reddie & Grose, we specialise in adapting US-drafted applications for the UK and EP systems, and we anticipate our US colleagues will appreciate this predictable black-and-white legal test for the first hurdle of patent eligibility for software and mathematical methods. We can expect a dramatic reduction in instances of the UKIPO refusing to search an invention for failing to meet patent eligibility requirements. The patentability rules across Europe are now better harmonised, although there remains a divergence at the final stage for assessing obviousness.
Eligibility and the Comvik Filter: The EPO Approach
The new guidance from the UKIPO sets out a three-step approach consisting of two “hurdles” and an “intermediate step” between the two hurdles.
The first step is the “any hardware” hurdle. Under Section 1(2) of the Patents Act, subject-matter such as a “program for a computer … as such” or a “mathematical method” is explicitly excluded from being considered an invention, and so is ineligible for protection via a patent. In the new guidance, the UKIPO explicitly adopts the EPO’s “any hardware” test. If a patent claim recites any physical technical means, such as a generic computer, a processor, or a computer-readable storage medium, it avoids the “as such” exclusion entirely and is categorised as an eligible “invention”. This hurdle is low and is easy to overcome for software and artificial intelligence (AI) inventions, which inevitably require computing hardware to function. These applications can now proceed to substantive examination rather than face outright rejection at the initial eligibility stage.
The second step is the “intermediate step”. It is where features of the claim are filtered in accordance with Comvik. While the first hurdle is easily cleared, the EPO examiners analyse the claim in the intermediate step to distinguish between technical and non-technical features, where non-technical features are those that relate to a category of excluded subject-matter. Any feature that is inherently non-technical, such as an abstract algorithm, is ignored during the subsequent assessment of inventive step. For a feature to survive this filter and therefore be counted in the assessment of inventive step, the applicant must convince the EPO examiner that the algorithm or mathematical method serves a “specific technical application” or is adapted to a “specific technical implementation”. In the context of AI, either the output of the AI is applied to solve a technical problem in the physical world (beyond the internals of the computer) or the algorithm is specifically adapted to the internal functioning or architecture of the computer to improve its operation.
At the third step (the second “hurdle”), Comvik comes up against the UKIPO’s inventive step practice under Pozzoli. The examiner assesses whether the surviving technical features are novel and involve an inventive step over the prior art. The EPO and UKIPO practices differ at this point step in the framework.
At the EPO, inventive step is assessed by the “Problem-and-Solution” approach. An EPO examiner identifies the closest prior art, determines a claim’s distinguish features relative to the closest prior art and formulates an objective technical problem based on the effect of those distinguish features. The EPO examiner assesses whether the claimed solution to that problem would have been obvious to the skilled person.
The UK Supreme Court in Emotional Perception decided it was not necessary to adopt Problem and Solution; it is not required under the EPC. In the new guidance, UKIPO examiners are instructed to apply the traditional UK Pozzoli framework to the technical features surviving from the intermediate step to identify the “inventive concept”. Under Pozzoli, examiners characterise the inventive concept and ask whether it requires an amount of invention relative to the state of the art but are not required to formulate an objective technical problem as under the EPO’s Problem-and-Solution approach.
Under the new guidance, the UKIPO operates a hybrid system for CII and AI inventions. It uses EPO-style filtering of claim features according to Comvik, but follows this with the UK-style Pozzoli assessment to determine if the surviving features are obvious. This means that applicants should expect an examination that filters claims like an EPO examiner but judges the ultimate “inventive concept” like a traditional UKIPO examiner.
Strategic Implications for Drafting
The initial question for patent attorneys drafting applications for global prosecution is whether the UKIPO’s guidance warrants any changes in drafting strategy for CII and AI inventions.
For the time being, we do not believe this guidance will fundamentally change our drafting practice or our advice for those drafting overseas. A patent application for a computer-implemented invention drafted with the EPO in mind will likely remain suitable for the UKIPO. Because both the EPO and UKIPO now apply Comvik to separate technical features from non-technical features, a patent specification that anchors an algorithm to physical, technical reality (whether via its inputs and outputs applied to a technical field or via its specific technical implementation) will satisfy the requirements of both jurisdictions.
We acknowledge that edge cases will still arise because of the differences between the Pozzoli framework and the Problem-and-Solution approach. Under Pozzoli, applicants have more flexibility to argue that an invention is non-obvious based on its technical contribution, even if it is difficult to formulate an objective technical problem in the EPO style. On the other hand, a UKIPO has discretion to characterise the inventive concept more broadly than an applicant would prefer, potentially finding a combination of features obvious under Pozzoli that an EPO examiner would find non-obvious under a narrow objective technical problem. Despite these potential differences at the final hurdle, we see no reason to change the fundamental drafting strategy at this stage.
Risks and Uncertainties – How Will UKIPO Examiners Apply the Guidance?
While the statutory guidance from the UKIPO sets out a clear legal theory for how excluded subject-matter will be assessed, we are yet to see how UKIPO examiners will apply the guidance in examination. Before Emotional Perception, the UKIPO’s examiners applied Aerotel for 20 years and it will be ingrained in their examination practice. Given the learning curve UKIPO examiners face, we cannot predict how strictly or uniformly individual examiners will apply the EPO’s Comvik approach. In addition, there is case law extending back decades at the EPO applying Comvik to many different types of inventions and technologies, considering the patentability of computer games, gambling machines or graphical user interfaces for instance. It remains to be seen whether such case law will be persuasive to UKIPO examiners, or whether a new line of jurisprudence will develop at the UKIPO as to what is and is not “technical”.
At Reddie & Grose, where we regularly guide US-originating portfolios of high-tech inventions through UK and EPO examination, we expect to see a sharp decrease in eligibility objections under Section 1(2) and a corresponding increase in obviousness objections based on surviving technical features. We are monitoring examination reports issued by UKIPO examiners under the new guidance and we will learn more in due course as the framework is applied more widely across the UKIPO’s software and AI examination groups. We will continue to update our colleagues on the most effective prosecution tactics as matters become clearer.
Next steps
The Emotional Perception decision and the UKIPO’s statutory guidance represent a major shift. The examination process is more harmonised and will be more predictable for applicants.
While the specific application that was the subject of Emotional Perception may ultimately be refused, we believe the changes to examination practice caused by Emotional Perception will ultimately lead to a patent office that is more receptive to computer-implemented inventions and AI inventions in particular.
The Emotional Perception decision concerned patent eligibility of an artificial neural network (ANN) implemented on hardware, the ANN providing media recommendations based on objective physical properties of the media rather than human-derived tags. The decision necessarily focused on a computer-implemented inventions and an AI inventions, but the UKIPO guidance should be applicable to other categories of excluded subject-matter, such as business methods, mental acts and aesthetic creations.
If you are prosecuting computer-implemented inventions, mathematical inventions or AI technologies in Europe and the UK, strategic planning remains as important as ever. It is just as important to make sure the originally filed application meets the requirements for overseas examination as it is to deal with examination reports once prosecution begins. If you have questions about the examination process for software patents in Europe and the UK or want advice on pre-filing amendments to make European examination easier, we invite you to contact Christopher Smith and the team at Reddie & Grose.
This content 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.
