BACKGROUND

In relation to Marathon Oil Company's Application (Patent Office) BL O/174/10, Marathon Oil Company and Companie Generale de Geophysique (the Applicants) filed an application to patent an invention relating to “a method for predicting quantitative values of a designated rock or fluid property.” The invention was to be used to find subterranean resources such as oil, gas, water or minerals. The Applicants contended that the claimed invention fundamentally related to using a model in a patentable method of measuring fluid and rock properties. The Applicants accepted that the measurement was indirect, but still asserted that it was a measurement of a physical property nonetheless. The Examiner did not agree and found that it was simply a method of improving on an existing model and that it fell foul of the exclusions from patentability. The Hearing Officer, applying the “Aerotel/Macrossan” test, set about determining whether the Applicants’ or the Examiners position was correct.

Construing the Claim

The Hearing Officer considered that “the skilled person would interpret the claimed invention as a model or representation of an underground volume which provides a prediction of its seismic response based on values of the rock or fluid properties which are initially put into a model.”

Identifying the Actual Contribution

The Hearing Officer noted that the Court of Appeal had summed up this question usefully in Aerotel [2006] EWCA 1371 by asking the question: what has been added to the stock of human knowledge? The Hearing Officer also noted, with a view to not assessing the contribution too narrowly, that the law required her to consider the contribution by not only considering the novel and inventive parts of the claim, but the invention as a whole.

It was found that the contribution lied in “using real seismic data to improve a mathematical model (which was run on a computer).” The Hearing Officer also found that the method only provided a prediction of what the rock and fluid properties might be, as opposed to a real measurement of those properties.

Does the Contribution Fall Solely Within Excluded Matter?

The Hearing Officer considered two previous decisions of the UK Intellectual Property Office (UK IPO)—Institute du Petrole & ELF EP’s Application BL O/201/03 and Western Geco Limited’s Application BL O/135/07—and on the basis of the former decision, the Hearing Officer found that the invention was not patentable.

Is the Contribution Technical in Nature?

This question was not assessed as the invention was found to fail the third hurdle.

COMMENT

Under Section 1.2(c) of the Patents Act 1977 (the Act) and Article 52(2)(c) of the European Patent Convention (the EPC) a program for a computer is excluded from patentability. The difference between the approaches of the UK IPO and the European Patent Office (EPO) towards the assessment of whether an invention disclosed in a software patent application relates to a computer program (as such) or something more, has been a hot topic over the last few years.

The Court of Appeal in Symbian [2008] EWCA Civ 1066 sought to reconcile the differences in approach in assessing inherent patentability as between the UK IPO (using the Aerotel/Macrossan test) and the approach adopted by the EPO. However, the EPO’s Enlarged Board of Appeal confirmed in a recent Opinion that the approach of the EPO was that the general condition for a claimed invention not to be excluded from patentability was: whether the claimed subject matter had “technical character”, that a computer program had “technical character” only if the program causes a “further technical effect” when run, and that the further technical effect (when considering exclusion from patentability) need not be new.

The Opinion is difficult if not impossible to reconcile with the case law that underlies the Aerotel/Macrossan test. While the decision of the Hearing Officer in this present matter shows that the UK IPO is continuing to use the Aerotel/Macrossan test and ask what contribution has been added to the stock of human knowledge, no doubt the inconsistencies between the approaches of the UK IPO and the EPO will again reach the Patents Court.