UK examiners now search and examine software claims by the features that contribute technical character

2026-07-14UK

Intellectual Property Office, Practice Notice, "Search and Examination of UK Patent Applications under the Patents Act 1977 (as amended)" (14 July 2026), implementing Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks [2026] UKSC 3 (11 February 2026)

The United Kingdom Intellectual Property Office published a practice notice changing how examiners search and examine computer-implemented inventions after the Supreme Court's judgment of 11 February 2026 in Emotional Perception, which replaced the Aerotel approach to the exclusions in section 1(2) of the Patents Act 1977. Part 1 summarizes the judgment, including that an artificial neural network is a program for a computer whatever hardware implements it, and that programs generated by machine learning are computer programs. Part 2 tells examiners to stop applying Aerotel and sections 1.07 to 1.51.7 of the Manual of Patent Practice. Under the first hurdle, the "any hardware" test, a claim using technical means such as computer hardware is an invention, and a section 1(2) objection is raised only where the claim involves no technical means. Examiners then identify, feature by feature, which features contribute to the technical character of the claim as a whole, a feature contributing if it interacts with the technical subject matter to solve a technical problem, and may consult the European Patent Office Guidelines without being bound by them. Inventive step is still assessed under Pozzoli, with an objection where the only differences from the prior art make no technical contribution. Searches must cover the contributing features, and where an applicant answers an earlier Aerotel objection, examiners reconsider patentability afresh.

What it changesThe judgment set the test; the notice decides what examiners do with pending files, and three points change United Kingdom prosecution practice. First, the notice ties the fresh assessment of an outstanding Aerotel objection to the applicant's response, so every pending application carrying one should get a response now, ordered by compliance date, rather than waiting for the Manual of Patent Practice to be rewritten. Second, the search examiner searches the features that contribute to technical character, so an application that explains its contribution only in commercial or user terms risks a search aimed at the wrong features; the specification should name the technical problem and tie each claimed feature of the model or its training to the effect it produces. Third, because examiners may consult the European Patent Office Guidelines, technical-effect arguments prepared for European prosecution can be used before the United Kingdom Office with little change, and one specification can serve both.

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Burbage Law is the practice of Jon Burbage, a registered patent attorney. 342 United States patents have issued from applications he wrote; the full list is on the Patents page. More about Jon Burbage.

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