How will the Emotional Perception Case affect Inventors in the UK?

Supreme Court of the United Kingdom

Author Kelsey Farish Licence CC BY 4,0  Source Wikimedia Commons

 

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:

An Inventor's Guide to Shanks v Unilever

UK Supreme Court

Author Christine Smith Licence CC BY-SA 4.0

Jane Lambert

On 23 Oct 2019, the Supreme Court of the United Kingdom delivered a judgment that could affect anyone who works in R&D or in some other capacity in which he or she is likely to devise an invention. It could also affect an inventor who assigns his or her rights in an invention to his or her employer.  Five justices of the Supreme Court found that an invention that had generated revenues of £24 million had been of such "outstanding benefit" for the inventor's employer that the inventor deserved a payment of £2 million in addition to the salary and perks that he had received from his employment.

The case is known as Shanks v Unilever Plc and others and you can read all about it on the Supreme Court's website and my case note, Employees' Inventions - Shanks v Unilever of 28 Oct 2019 in NIPC Law.  My note links to a press summary of the judgment and a video in which Lord Kitchin, who delivered that judgment, reads that summary.

The right to an additional payment known as "compensation" arises out of s.40 of the Patents Act 1977. Subsection (1) could affect you if you are employed in a capacity where you are likely to devise an invention. Subsection (2) if you are employed in some other capacity that entitles you to patent your invention but you sell or grant an exclusive licence to your patent or right to apply for a patent to your employer,

However, inventors can't expect compensation in addition to their pay and benefits for any old invention.  It has to be one that generates an "outstanding benefit" for the employer. That is to say, a benefit that is exceptional or stands out.  That is not easy to prove.  Not many employed inventors apply for compensation and most of the applications that are made fail.

The significance of the Supreme Court's decision is that the Court made an award to the inventor even though £24 million is chicken feed to a multinational group of companies like Unilever.  The inventor, who is now a visiting professor of electronics and electrical engineering in the University of Glasgow, had worked in R&D for a subsidiary of Unilever in the 1980s. He applied for compensation as long ago as 2006. He took his case to the Comptroller-General of Patents, Designs and Trade Marks who appointed an official known as a "hearing officer" to hear his plea. 

One of the factors that the hearing officer had to consider under s.40 (1) was "the size and nature" of the employer's undertaking.  As Unilever, which makes everything from ice cream to deodorant is massive, the hearing officer could not say that £24 million was an "outstanding benefit" for that company. He dismissed the application. The inventor appealed to Mr Justice Arnold who agreed with the hearing officer. He then appealed to the Court of Appeal which agreed with the judge below and the hearing officer.

The inventor finally appealed to the Supreme Court which is the highest court of the United Kingdom. There Lord Kitchin, who had distinguished himself as a barrister of the intellectual property bar and later as a judge of the Patents Court and Lord Justice of Appeal, said that the hearing officer and the courts below had been looking at the words "the size and nature of the employer's undertaking" the wrong way.  The inventor had not been employed by the whole Unilever group but by a subsidiary that was responsible for R&D.  The correct way to consider the issue was to compare the benefits that had accrued from the invention in this case with all other inventions in the field that had emanated from the same subsidiary.  If that was done the £24 million benefit really did stand out and the inventor was entitled to a fair share of it.

The hearing officer had decided that 5% of the £24 million, which would have amounted to £1.2 million, was a fair share had he been able to make an award of compensation to the inventor and the Supreme Court agreed.  However, as Unilever had enjoyed the use of that money for many years and as the value of that sum had been eroded by inflation the Supreme Court gave the inventor an uplift to £2 million. Mr Justice Arnold had said that corporation tax should be deducted from the £24 million but the Court of Appeal disagreed with him and so did the Supreme Court.

Lord Kitchin made clear that the methodology of assessing the benefit from the invention having regard to the size and nature of the employer's undertaking did not apply to every case.  Sometimes it is appropriate to consider the benefit in relation to the revenues of the whole company as was the case where an employee's invention transformed the fortunes of the company.  Each case depends on its own facts.

While it is still not easy for an inventor to recover compensation over and above his or her salary and benefits this case has undoubtedly removed some obstacles and clarified the law. Most applications for employee's compensation start in the Intellectual Property Office where the procedure is less formal than a court and the costs that may be awarded against the unsuccessful party are considerably lower.

Anyone wishing to discuss this article or employee's inventions generally should call me on 020 7404 5252 or send me a message through my contact form.