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:

Invention-Con 2022: The US Patent and Trademark Office's Online Conference for Inventors, Makers and Entrepreneurs

Interior of the US Patent and Trademark Office

Author Hanaxides Licence CC BY-SA 4.0  Source Wikimedia Commons

 

Jane Lambert

Every August, the US Patent and Trademark Office ("USPTO") holds a conference for independent inventors, entrepreneurs, and small business owners known as Invention-Con. I mentioned it for the first time in USPTO Annual Inventors' Conference - something we should do here on 2 Aug 2014. Until 2019 the conference was held at the USPTO's head offices in Alexandria, Virginia just outside Washington DC. No doubt because of the pandemic Invention-Con was held online in 2020 and 2021.  So, too, will the next one which will take place between 10 and 12 Aug 2022.

The importance of the conference is attested by the welcome from Kathi Vidal, the Under Secretary of Commerce for Intellectual Property and Director of the USPTO on 10 Aug 2022.  Her entry on the Invention-Con website describes her as follows:

"As the chief executive of the USPTO, she leads one of the largest intellectual property (IP) offices in the world, with more than 13,000 employees and an annual budget of more than $4 billion. She is the principal IP advisor to the President and the Administration, through the Secretary of Commerce, and is focused on incentivizing and protecting U.S. innovation, entrepreneurship, and creativity. She leads an agency whose mission is to help American workers and businesses compete and collaborate, especially in ground-breaking technologies and across all demographics."

Immediately after the Director's welcome, there will be a 5-hour session entitled "Introduction to Intellectual Property" which will cover such topics as "Your IP, a potential gold mine", "IP journeys – Go from eureka to enterprise" and "IPitching: Innovation and investment". There will be another 5 hours the next day on the theme "Now what? How to put in motion a plan to protect your idea/business."  That will include talks on "Funds to fuel your future", "Grants and growth", "Succeed with government funding and resources" and "Inspiration to impact".  The final day will be 5 hours of talks on "IP in Everyday life" covering "IP in the fitness industry", "Tech in arts", "Small Business Success Stories" and "Meet the new trailblazers: Innovation to impact."

The speakers include inventors, angel and private equity investors, US government officials, entrepreneurs and professional advisors.  One of the most interesting is Arul Mathur who intends to read computer science and engineering at my alma mater, UCLA,  Arul, who is aged 18, has invented an automated, self-contained fire suppression system called Fire Activated Canister Extinguisher ("FACE") to protect properties against fires without the need for manual intervention.  He was inspired to invent FACE after a wildfire threatened his home.   After the record temperatures and the fires in London earlier this week, he will find a market for his invention here. 

The talks take place between 12:00 and 17:00 eastern time which would be between 17:00 and 22:00 our time.   Registration is by Eventbrite.  It does not appear to be possible for those who live outside the USA to register through Eventbrite because registrants have to pick a state or territory.   However, special enquiries could be made to inventioncon@uspto.gov.

There is no reason why other countries (including ours) should not stage similar conferences.  We do stage events like the British Invention Show but there is nothing like Invention-Con.  There is a great need for practical advice on patent, design and trade mark prosecution, grant, equity and loan funding, setting up businesses and scaling up which Invention-Con appears to deliver.   

Anyone wishing to discuss this article may call me on +44 (0) 20 7404 5353 during normal business hours or send me a message through my contact form.