Sitting as a High Court (Patents Court) judge on an appeal from the UK Intellectual Property Office, Judge Birss recently gave his decision in Halliburton Energy Inc’s Patent. He considered some of the exclusions from patentability in s1(2) of the UK Patents Act 1977. These include the well known exclusion for “programs for a computer… as such” which has dealt a fatal blow to so many patent applications in the past.
In the UK, to escape these exclusions, the invention must not fall solely within the excluded subject matter and must be technical in nature.
Halliburton’s patent application was for a method of optimising drill bit design by simulating the interaction of a drill bit with the material to be drilled. Although not explicitly claimed, Judge Birss held that the simulation was a computer-implemented invention.
On the judge’s analysis, when the task carried out by a computer program is not itself within the categories excluded from patentability, then it is likely that there is a technical contribution and the invention will be patentable.
With respect to Halliburton’s application, he was clear that there was a technical contribution and that the computer program exclusion did not apply, stating “Is it more than a computer program as such. The answer is plainly yes. It is a method of designing a drill bit.”
However, he still had to consider other possible exclusions from patentability. He dealt quickly with mathematical methods, saying the invention was not solely a mathematical method, as the data on which the mathematics is performed is based on something concrete, the drill bit design.
He then considered mental acts in some detail. It can be construed narrowly, to exclude only acts actually carried out mentally, or widely, to include anything capable of being performed mentally. After reviewing the line of authorities, Judge Birss gave his view that this exclusion from patentability is intended to ensure sure that patent claims cannot be performed by purely mental means. This narrow construction aligns closely with the approach of the TBA of the EPO, but conflicted with the previous practice of the UKIPO examiners.
Following this approach, a computer-implemented method of processing information such as Halliburton’s, even if the method could be done mentally, will not fall foul of the mental act exclusion.
Since this judgment, the UKIPO have issued a new Practice Notice on how examiners should deal with this exclusion going forward, confirming that they will follow Judge Birss’s narrow construction of the term. This new approach provides welcome certainty that inventions specified to be computer implemented, such as simulation programs, will not be excluded even if they could, if only in theory, be performed mentally.
The judgment finished by addressing the widely held perception that the EPO’s approach to the exclusions is more favourable to patentees than that of the UK IPO. The judge could see no difference to the outcomes when both approaches are applied “wholly and correctly.” As such, it was his view that computer implemented inventions are as patentable in the UK as in the EPO.
Of course, this should have been the position already as UK law is wholly in accordance with the EPC in this area. What he did not address, however, is whether the law is being consistently applied “wholly and correctly” by the EPO and the UK courts. Perhaps that is a question to be drilled into on another day.