On 5 October, His Honour Judge Birss QC gave judgment in the High Court on an appeal from the Comptroller-General of Patents relating to the patentability of computer implemented inventions. In Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) four patent applications had been rejected by the UK Intellectual Property Office (UK IPO), all on essentially the same grounds – that the inventions were excluded from patentability as schemes, rules or methods for performing a mental act and as computer programs. The High Court case concerned the appeals against those rejections.
The High Court overturned the UK-IPO decision, explicitly confirming that technical design methods are patentable, even where the method is implemented entirely on a computer. The applications for patents concerned methods of designing a roller cone drill bit using various computer simulations. His Honour Judge Birss QC held that Halliburton’s inventions are not methods of performing mental acts on the basis that they are clearly limited to implementation on a computer, and that the exclusion from patentability applies only to methods performed mentally. Following a careful review of the authorites, he stated (at [63]):
In my judgment the correct scope of the mental act exclusion is a narrow one. Its purpose is to make sure that patent claims cannot be performed by purely mental means and that is all. The exclusion will not apply if there are appropriate non-mental limitations in the claim.
His Honour Judge Birss QC went on (at [78]) to comment on the Comptroller’s Practice Note issued on 2 November 2006 following the Aerotel case and the further note issued on 8 December 2008 following the Symbian case:
Paragraph 8 addressed the mental act exclusion and referred back to paragraph 13 of the post Aerotel Practice Note. Paragraph 8 states ‘In future examiners will object to the computerisation of what would have been a pure mental act if done without the aid of a computer as both a mental act and a computer program as such’. This is the wide construction and so, as one would expect, [the Examiner’s] decisions in this case are in accordance with the current Practice Note. The logic of the Practice Note is that, on the strength of Symbian, the Examiners were now to follow the wide approach to the mental act exclusion rather than the narrow one. However Symbian did not decide that question. My decision in this case means that the approach proposed to mental acts in paragraph 8 of the current Practice Note is wrong in law and should not be followed.
His Honour Judge Birss QC concluded (at [79]) with a look at the arguments about a divergence in the approach of the EPO and the UK IPO:
The difficulties perceived in the UK with the way the EPO now approaches computer implemented inventions are genuine jurisprudential concerns of respectful nature. As a matter of law computer implemented inventions are just as patentable in the UK as in the EPO. The Patents Act is in accordance with the EPC in that both contain an exclusion for computer programs as such. That is a matter of legislation and in my judgment it is not for any court to interpret that exclusion out of existence.
Practitioners may find one passing observation from His Honour Judge Birss QC (at [23]) to be of special interest:
This case is by no means unique as an example of a computer implemented invention in which the word ‘computer’ is conspicuous by its absence from the patent claims. I am quite certain that one reason for this is a desire by applicants to try and play down the fact that their inventions are really based almost entirely on computer software. It fools no-one and in some cases makes things more complicated than they need to be.
Mark Kenrick, Partner at Marks & Clerk, comments:
‘UK patent law excludes mental acts, computer programs and mathematical methods as such from patentability. However the High Court has made it crystal clear that an invention relating to a process for designing drill bits is neither just a computer program nor a mere mathematical method. It provides something technical – a drill bit design process – outside both of these exclusions. Furthermore, such a method cannot be considered to be a mental act given its computer implementation. Consequently it is now plain that technical processes are patentable even if they are entirely computer-based in their implementation. The UK-IPO has unfortunately earned a reputation as being relatively hostile to software patents as compared with the European Patent Office. This decision shows clearly that the exclusion relating to mental acts is a narrow one that should never affect the patentability of computer implemented inventions.‘
