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:

Kalifa Review fails to mention Patents for FinTech Inventions

By James Gillray   Public Domain

 

Jane Lambert

This morning the government published the Kalifa Review of UK Fintech.  As I learnt my intellectual property law while working on the legal issues of chip and pin cards and finding ways to protect banking brands before service marks could be registered for VISA International in the 1980s and have followed the sector ever since FinTech is an area of law in which I feel entitled to claim expertise.

The report is 108 pages long in a magazine-style format.  It makes findings that I would expect such as Brexit, covid and competition being threats to the UK's competitive position as well as recommendations that FinTech company founders should be allowed to retain shares with enhanced voting rights after flotation that I found surprising.

One issue that I have found to be problematic in practice but which Kalifa did not mention at all was the exclusion of "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer" as such from patentability by s.1 (2) (c) of the Patents Act 1977. Because of uncertainty as to whether a patent will be granted and if granted whether revocation proceedings. inventors ten to rely on trade secrecy which discourages collaboration and innovation.

Although the performance of the UK FinTech industry compared favourably to those of other European countries there were no direct comparisons with the performance of the sector in countries outside Europe. There were, however, oblique references such as the greater percentage of initial public offerings on exchanges in the USA which suggested that the US FinTech industry was significantly more successful than the UK's. One anecdotal reason for the greater success of the US industry is the absence of any equivalent to s.1 (2) in the US Patent Act.   Even without that exclusion, the Americans see quite capable of rejecting applications for patents that are not recognizable as inventions (see Bilski v. Kappos, 561 U.S. 593 (2010)).

This is no mere griping.  Many of the most exciting developments in the technology have come from small businesses which are often one-man bands.  In the early days, founders rely heavily on investment from angels or private equity investors and they nearly always insist on some paperwork from the Intellectual Property Office before they open their cheque books. 

Despite these observations and reservations, the Kalifa report is well worth reading.   Anyone wishing to discuss it with me may call me on +44 (0)20 7404 5252 or send me a message through my contact form.