Siesmic Software Shift By UK Courts

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...

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