Computer-Aided Design Method Held Patentable in UK

Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (5 October 2011)

UK Patents – patentable subject matter – whether claim to a method of designing a drill bit constitutes an unpatentable ‘mental act’

In the recent decision Re Halliburton Energy Services Inc, the England and Wales High Court (Patents Division) has overturned the rejection of four patent applications by the UK Intellectual Property Office (UKIPO), providing some much-needed clarity around the application of the exclusions from patent-eligibility in section 1(2) of the UK Patents Act 1977  to computer-implemented inventions.

The decision overturns a current practice of the UKIPO, which essentially adopts a wide approach to determining whether a claimed invention is excluded from patentability on the basis that it is a scheme, rule or method for performing a mental act.  According to this practice, a method that is expressly claimed in a computerised form, but which would constitute merely mental steps if performed without the aid of a computer, is rejected as being both a mental act and a computer program as such. 

This practice formed the basis for rejection of the four Halliburton applications, each of which related to a method of designing a drill bit using simulations based on a finite element analysis, i.e. essentially computer-aided design (CAD) techniques.

The Halliburton decision confirms that the ‘mental acts’ exclusion is narrow in scope, and acts to prevent the grant of claims that would be infringed merely by mental processes.  It also confirms the patentability under UK law of inventions having a requisite technical nature, even when implemented in the form of a computer program.

PATENT-ELIGIBILITY OF COMPUTER-IMPLEMENTED INVENTIONS

The court began by reviewing the patent-eligibility computer-implemented inventions, in light of the fact that UK (and European) provisions expressly exclude ‘computer programs … as such’ from patentability, noting (at [30]) that it is now clear that:

An invention which makes a contribution to the art which is technical in nature … is patentable even if it is implemented entirely on a computer and even if the way it works is entirely as a result of a computer program operating on that computer.

However, there are other exclusions (such as mathematical methods, and schemes, rules and methods for performing mental acts, playing games or doing business), and no amount of ‘technicality’ will save a claim to a computer-implemented invention if the actual contribution lies within one of these excluded fields (at [33]):

If the task the system performs itself falls within the excluded matter and there is no more to it, then the invention is not patentable …. Clear examples are from the cases involving computers programmed to operate a method of doing business, such as a securities trading system or a method of setting up a company …. Inventions of that kind are held not to be patentable but it is important to see why. They are more than just a computer program as such. For example, they self evidently perform a task which has real world consequences …  a data processing system operating to produce a novel technical result would normally be patentable.  …. When the result or task is itself a prohibited item, the application fails.

Thus, for example, computer-implemented business methods are not denied patent protection merely because they are computer-implemented, but because they perform nothing more than an excluded method of doing business.  When viewed this way, it is difficult to imagine a commercially meaningful claim that would be excluded solely on the basis that it is directed to a computer program as such.  A claim to a process lacking ‘real world consequences’ might fail on this basis, but is unlikely to represent anything of economic value that would justify pursuing patent rights.  Thus – as the court points out here at paragraph [34] – most examples of excluded computer-implemented inventions involve an interplay with at least one other exclusion.

Computers are themselves technical in nature, and thus it is frequently argued that computer-implemented inventions of all stripes are inherently technical, and thus patentable.  However, whereas a computer program that improves the operation of a computer is technical and patentable, a computer program that improves – through the application of technology – the operation of a task within an excluded subject matter (such as a mathematical method, or a business process) is not patentable, no matter how technically-sophisticated, because these exclusions are ‘generic’ (at [35]).

Conversely, when a task performed by a computer program ‘represents something specific and external to the computer and does not fall within one of the excluded areas’, then it is ‘likely’ that the computer-implemented invention is patent-eligible.  While the court was reluctant to go so far as to say that such an invention would necessarily be patent-eligible (no doubt due to an abundance of caution), no specific examples of ineligible claims were provided (at [38]).

‘MENTAL ACTS’ EXCLUSION IS NARROW IN SCOPE

Regarding the exclusion for ‘schemes, rules or methods for performing mental acts’, the court considered that there are essentially two approaches to this provision. 

According to a wide interpretation, a method is excluded as a ‘mental act’ if it is capable of being performed mentally regardless of whether, as claimed, it is in fact performed mentally (at [42]).  This approach effectively gives primacy to the substance of a claim over its form.  A claim expressly limited to ‘computer-implemented’ steps does not escape the exclusion if the nature of the steps is such that they could, at least in theory, be performed mentally.

The alternative narrow interpretation looks to primarily to the form of the claim, rather than the substance.  A claim which expressly requires the use of a computer cannot be excluded as a mental act because it does not encompass acts that are wholly performed mentally (at [43]).  Of course, such a claim might be excluded on other grounds (e.g. as a mathematical or business method), or it might fail for obviousness, however it would not be ineligible simply of the basis of the ‘mental acts’ exclusion.

Although the court found variations in the approach taken in various earlier cases, it concluded that ‘the balance of authority in England is in favour of the narrow approach to the mental act exclusion’ (at [57]).  ‘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’ (at [63]).

APPLICATION TO HALLIBURTON CLAIMS

The court determined that the actual contribution made by the invention was (at [66]-[67]):

A computer-implemented method of designing drill bits that includes simulation of the performance of the drill bit based on calculating a three dimensional mesh for each cutting element and for the earth formation and using that to determine the forces acting on each mesh segment of the cutting element and then the forces and stresses acting on each cutting element.

Applying the narrow interpretation (at [70]): ‘the mental act exclusion is irrelevant in this case. The claimed method cannot be performed by purely mental means and that is the end of the matter. Put another way, the contribution is a computer implemented method and as such cannot fall within the mental act exclusion.’ 

Being computer-implemented, the next question was whether the invention is more than a computer program as such, answered at [71]: ‘… 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.’

It was also argued in court (though rejected in the original UKIPO decision) that the invention may be excluded on the basis that it was a mathematical method.  The court did not agree, stating (at [72]) that ‘[a]lthough obviously some mathematics is involved, the contribution is not solely a mathematical method (on top of being a computer program) because 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.).’

CONCLUSION

This decision will assist applicants seeking patent protection in the UK for computer-implemented inventions which solve a technical problem, particularly where the computer program in question processes data which represents or relates to something existing (or potentially existing) in the real-world.

It is expected that the UKIPO will be required to revise its current practice guidelines, which have effectively been declared contrary to the law by this judgment.  This will allow a wider range of computer-implemented inventions to be patented in the UK, and will bring outcomes at the UKIPO more closely into line with the European Patent Office (EPO).

Notably, the decision will have no impact on the patentability of business methods in the UK, which are excluded regardless of whether or not they are implemented via computerised means.

Tags: Computer programs, Patentable subject matter, UK