In recent years, machine learning and so-called ‘artificial intelligence’ systems have once again come into the spotlight. As ever, patent law both in the UK and around the world has developed to keep pace with and encourage these emerging technologies.

The UK Intellectual Property Office (UKIPO) and the UK courts are often guided by decisions of the European Patent Office (EPO). However, when considering the patentability of computer-implemented inventions both the EPO and the UKIPO have forged their own path.

In the UK, the patentability of computer-implemented inventions is viewed through the framework of the Aerotel case. Here, the patentability of a computer-implemented invention is decided by first determining the actual inventive contribution defined by the claims of a patent application in view of the existing technology. Subsequently, in a second stage, this inventive contribution is considered to determine whether it falls solely within the subject matter excluded from patentability, for example the contribution defined by the claims is purely a business or mathematical method.

In a final stage, the inventive contribution is assessed to determine if it is technical in nature, for example by effecting a process which occurs outside a computer. If this final criterion is satisfied, the patentability of the claimed subject matter will be viewed favourably by the UKIPO.

On the other hand, the EPO takes an approach whereby the recitation of a single technical feature, even a generic computer system, in a patent claim is sufficient to draw the claim out of the realm of excluded subject matter. However, once this first hurdle is overcome, the EPO will then disregard any non-technical features, such as presentations of information or methods of doing business, included in the claims and consider the novelty or inventiveness of the remaining subject matter. If after disregarding any non-technical features all that remains is a generic computer system, the claim will lack novelty or an inventive step.

In practice, while the methodology used to assess the patentability of computer-implemented inventions differs between the EPO and the UKIPO, both approaches tend to arrive at a similar conclusion. However, to ensure the best chance of success before both the EPO and the UKIPO, it is vital that any draft patent application directed towards a computer-implemented invention discusses the real world effects of the invention in detail.