October 5th, 2011 was a day for celebration as the High Court handed down a superbly reasoned, coherent judgment in Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) concerning the patentability of computer-implemented inventions in the UK. The judgement concerns the exclusions most commonly encountered under UK practice; namely, that computer-implemented inventions are "a mental act", "a mathematical method" or a "computer program" as such.
Halliburton's application (GB2443124A) related to the design and simulation of roller cone drill bits. The claims contained steps of: initially designing a drill bit, simulating drilling portions with the initial drill bit design, modifying the drill big design, simulating drilling portions with the modified drill bit design and comparing the results of the simulations. The claims were rejected by the UK IPO as falling within all of the above exclusions.
On appeal, Jude Birss considered the scope of the exclusions and handed down a judgement that preserves consistency with the current main UK judgement on patentability of computer-implemented, namely Aerotel, while apparently restoring harmony with EPO practice on patentability of computer-implemented inventions.
In relation to the "mental act" exclusion, the judge indicated that "the balance of authority in England is in favour of [a] narrow appraoch to the mental act exclusion". Judge Birss indicated that "[if] the claim cannot be performed by purely mental means, the exclusion is irrelevant." The purpose of the "mental act" exclusion "is to make sure that patent claims cannot be performed by purely m ental means and that is all. The exclusions will not apply if there appropriate non-mental limitations in the claims".
In considering the scope of the computer program exclusion, the judge considered whether the invention was "more than a computer program as such? The answer is plainly yes. It is a method of designing a drill bit. Such methods are not excluded from patentability and the contribution does not fall solely within the excluded territory. Drill bit design is not a business method, nor a scheme for playing a game nor (as I have held) is this claim a scheme for performing a mental act". We note with interest, and pleasure, the judge's emphasis on "solely".
The scope of the mathematical method exclusion was considered and the UKIPO's objection to grant of a patent on that basis was firmly rejected on the grounds "the data on which the mathematics is performed has been specified in the claim in such a way as to represent something concrete (a drill bit design etc.)"
The final cross-check under UK law is to ensure that the invention is technical. The judge's views on whether or not the invention is technical in nature are highly relevant to achieving harmony witth the EPO's position. The judge indicated that this invention is a better way of designing a drill bit with a greater ability to cut rock and the detailed way in which this method works – the use of finite element analysis – is also highly technical.
We suspect that much will be made of the judge's comments on the technical nature of the invention. The approach of the judge on this point is consistent with the EPO's approach to assessing inventive step.
We believe that the UK patent office will be required to issue revised examination guidelines relating to the exclusions in light of this judgement.
In summary, this judgement should assist in gaining protection in the UK for computer-implemented inventions which solve a technical problem, particularly where any data processed by the invention relates to a real-world entity. We do not expect this judgement to make any change to the patentability of business methods.
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