UK patent practice note about search and examination in the light of Emotional Perception AI

The UK IPO has published a patent practice note Search and Examination of UK Patent Applications under the Patents Act 1977 (as amended) - GOV.UK to inform Examiners and applicants about changes to patent search and examination of applications about computer implemented technology. We summarise the practice note and comment on the implications for how to implement the “intermediate step” of Emotional Perception AI in conjunction with the Pozzoli test for inventive step.

Background

In February 2026 the UK Supreme Court handed down its much anticipated judgment in Emotional Perception AI Ltd v Comptroller-General of Patents, Designs and Trade Marks^[1], bringing to a close a case which has charted a turbulent course through the English courts. The decision has significant implications for the patentability of computer-implemented inventions in the United Kingdom. The decision can be accessed here.

As explained in our previous article, UK Supreme Court Ruling on AI Patentability: Key Insights the Supreme Court’s decision overturned Aerotel, in light of the EPO’s Enlarged Board of Appeal decision in G1/19. Despite concerns raised at the appeal hearing that such a decision would require the UK also to overturn the UK’s approach to inventive step in Pozzoli^[5], the Supreme Court disagreed. Thus, the familiar Pozzoli approach to assessing inventive step remains valid although the Supreme Court notes “Whether the conclusions reached on this appeal … give rise to any need to adjust the methodologies currently used in the UK for assessing … inventive step … will have to be left to a case where it arises”.

The Supreme Court endorsed the intermediate step of the COMVIK approach for mixed-type inventions. The intermediate step is for filtering features so that only those contributing to technical character of the claim count when assessing inventive step.  Patent stakeholders have been waiting for guidance on how to apply the intermediate step together with Pozzoli. 

EPAI examination

Following the UK Supreme Court outcome there has been a round of examination of the Emotional Perception AI (EPAI) application at the UK office and a hearing date is expected to be set very soon. In their examination report the Examiner provided an inventive step assessment applying the intermediate step before considering prior art; and a second inventive step assessment applying the intermediate step after considering prior art. Both assessments reached the same conclusion.  

The practice note. 

The ten page practice note has a summary of the Emotional Perception judgment and a second part with practical guidance for how Examiners are to proceed. 

The second part is two pages long and has dedicated sections about the first hurdle, the intermediate step, the second hurdle and searching. 

The section on the intermediate step explains that UK Examiners may refer to the EPO guidelines Part G, Chapter 2, section 3 although notes these are not to be taken as binding.

Comment

The practice note is welcome guidance for patent stakeholders and provides clear and practical advice. The practice note feeds into debate in the patent community about how to apply the intermediate step in combination with Pozzoli and there are a number of points of discussion as now explained. 

Should prior art be considered before or after the intermediate step? At least in the EPAI examination the same outcome was achieved via both routes. Pros and cons of these two routes are still emerging. At least where prior art is considered before the intermediate step, the prior art has to be available at that point i.e. a search needs to have been done. The practice note leaves either option as a possibility and simply states that Examiners “should identify that a feature contributes to the technical character of the claim, viewed as a whole, if it contributes to, or interacts with, the technical subject matter of a claim for the technical solution of a technical problem.” As explained in more detail below, the UPC Court of Appeal has recently applied the intermediate filtering step after considering the prior art. 

In the UK patents can be obtained directly from the UK IPO or via the European Patent Office to obtain EP(UK) patents. In Fujifilm v Kodak the Unified Patent Court gave an opinion about validity of an EP(UK) patent; thus the UPC is able to give an opinion about validity of an EP(UK) patent as part of inter partes proceedings. Therefore it is interesting to consider whether the UPC approach to computer implemented inventions can offer insight into how the UK case law will develop, especially because the UPC uses a holistic approach to inventive step which is closer to the UK’s Pozzoli test than the EPO problem and solution test. The UPC Court of Appeal in UPC_CoA_901/2025 examined validity of a patent application concerning a computer implemented display to assist a diabetes patient in their glucose management.  The UPC Court of Appeal identified the person skilled in the art, read the specification to find the problem being addressed, found a prior art document as an initial starting point to address the problem and identified distinguishing claim features. Whether those features contributed to technical character of the claim was then examined using the claim feature wording verbatim from the claim. Thus it appears the intermediate step filtering was applied after the prior art. 

Whether the inventive concept used in Pozzoli has to be identical with the technical character of the claim as a whole used in the intermediate step? The practice note uses different terminology for these two things: the “technical character of the claim, viewed as a whole”; and the “inventive concept”. It may be these are different things and not to be equated.  At least in the EPO COMVIK approach the technical character of the claim is found in the claim wording itself; whereas the inventive concept according to Pozzoli may be found in the story of the invention told in the specification. In the UPC case mentioned above, the court looked into the specification to find the problem being addressed and defined a contribution of the invention which seems to be very similar to the UK inventive concept. The technical character of the claim was expressed in a very similar way in their application of the intermediate filtering step. Thus it seems in some cases the inventive concept and the technical character of a claim are very similar. 

How can UK Examiners identify technical character of a claim given the relatively small amount of UK case law available on the topic. The practice note appears to recognise this practical point and mentions the EPO guidelines may be used. 

Will the UK IPO follow the EPO approach regarding technical implementations, such as where an algorithm is adapted to computer hardware? The practice note does not have explicit guidance regarding technical implementations but does point to the EPO Guidelines which do mention technical implementations as possible ways to achieve grant.