29/05/2026
Non-technical features back in the game for assessing inventive step? Is there an alternative to the problem solution approach?
The UK Supreme Court just rewrote the rules for AI patents.
In February 2025, it overturned the Aerotel test — which had been the standard in Britain since 2006 — and declared it "unsound law." The entire legal landscape for AI and software inventions changed overnight.
In episode 175 of IP Fridays, I spoke with Bruce Dearling, partner at Hepworth Brown. He wrote the original application, prosecuted it through every level of the British court system, and won at the Supreme Court. He probably knows more about this case than anyone alive.
Here is what struck me most.
The ruling introduced what is called the "intermediate step." Before assessing inventive step, an examiner must now look at how all the features in a claim interact — technical and non-technical alike. You can no longer just strike through a feature because it looks non-technical. If those features together produce a real technical effect, the claim stands. Bruce considers this far more important than the "any hardware" headline that most commentators focused on.
What makes this bigger than a UK story: the Unified Patent Court issued a decision in April 2025 — Abbott v. Sinocare — using language strikingly similar to the Supreme Court ruling. The UPC is not bound by UK courts. The overlap is not a coincidence. And Bruce told me, off the record, that people close to the EPO have spoken about converging UPC practice toward the UK Supreme Court approach. We may be watching a pan-European shift in real time.
The EPO itself is not there yet. COMVIK and the problem-solution approach are still the standard. Bruce's view: the problem-solution approach is structurally infected with hindsight reasoning. You formulate the objective technical problem by working backwards from a solution you already know. He has held this view for decades, and now the UK Supreme Court has said something similar.
Singapore's IP Office has already launched a public consultation asking whether the Emotional Perception ruling should be adopted into national law. That is Commonwealth-wide soft power from a single Supreme Court judgment.
Two practical takeaways for anyone prosecuting AI or software patents right now: make sure the claim contains hardware, and make sure the description fully explains what technical effect each piece of hardware or software achieves. Not as boilerplate — as a real technical account. Bruce is blunt: those who write the claim first and the description second run into trouble.
Full episode at the IP Fridays website and any podcast platform you can think of - Spotify, Amazon Music, Youtube, Apple Podcast, ... — worth your time if you work in patent prosecution, IP strategy, or tech.
