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Supreme Court of the United Kingdom
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Jane Lambert
The Supreme Court's judgment in Emotional Perception AI Ltd. v Comptroller General of Patents, Designs and Trade Marks [2026] UKSC 3 which was handed down on 11 Feb 2026, reverses nearly 20 years of case law on the meaning and application of s.1 (2) (c) of the Patents Act 1977:
"It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of—
......
(c) ........ a program for a computer;
......
but the foregoing provision shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such."
Ever since the Court of Appeal delivered its joint decision in Aerotel Ltd. v Telco Holdings Ltd and others Rev 1 [2006] EWCA Civ 1371 (27 Oct 2006) the courts of England and Wales, Scotland and Northern Ireland and the patent examiners and hearing officers of the Intellectual Property Office ("the IPO") have applied the following test:
"(1) Properly construe the claim.
(2) Identify the actual contribution (although at the application stage this might have to be the alleged contribution).
(3) Ask whether it falls solely within the excluded matter.
(4) If the third step has not covered it, check whether the actual or alleged contribution is actually technical."
In Emotional Perception, the Supreme Court held at para [20] of its judgment that Aerotel should no longer be followed. I explained why in Emotional Perception AI Ltd v Comptroller in the Supreme Court on 12 Feb 2026 in NIPC Law:
"The Justices noted that the Enlarged Board of Appeal of the Europeam Patent Office had approved in G1/19 Bentley Systems (UK) Ltd/Pedestrian Simulation (Decision G1/19) [2021] EPOR 30) cases that stated that the Aerotel/Macrossan approach was not a good faith implementation of art 52 of the European Patent Convention which s.1 (2) (c) of the Patents Act 1977 is supposed to implement in the United Kingdom. One of those cases held that the Aerotel/Macrossan approach was incompatible with art 52 because that approach had been based on a misunderstanding of the word "invention" as used in the Convention."
As is to be expected, there is a note on the Manual of Patent Practice that the IPO is reviewing the Supreme Court's judgment and that its guidance between para 1.07 and 1.51.7 is subject to change.
How much difference this new guidance may make in practice is uncertain. Mr Justice Birss (as he then was) remarked in para [9] of Lenovo (Singapore) PTE Ltd v Comptroller General of Patents [2020] EWHC 1706 (Pat), [2020] RPC 18), that “although in methodological terms the approach in the UK and the approach in the EPO may look different, in practice they reach the same result, at least usually.”Also, most UK patent attorneys with experience of software patent applications will have applied for patents to the European Patent Office as well as the IPO and will be familiar with its practice. For those who are uncertain, para 3.6 of the April 2025 edition of the Guidelines for Examination in the European Patent Office should provide most of the answers.
Anybody wishing to discuss an issue related to this topic under my Initial Advice and Signposting Scheme should complete the form. I plan to call an online meeting of the NIPC Inventors Club to explain the Emotional Perception case. Anyone wishing to talk to me can call me on +44 (0)20 7404 5252 during UK office hours or send me a message through my contact form.
Further Reading
Jane Lambert Emotional Perception AI Ltd v Comptroller in the Supreme Court 12 Feb 2026 NIPC Law:
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