Software Patents in the UK - Halliburton Energy Inc’s Patent

On 6 October 2011, Richard Davies (Barrister) of Hogarth Chambers gave early notice of an interesting decision on the patentability of software-related inventions in the UK.The case involves a computer program for designing a drill bit by simulating drill bit performance. The patent application itself (GB2443124A) can be found here

Abstract of  GB 2443126  (A)

Methods and systems may be provided for simulating forming a wide variety of directional wellbores including wellbores with variable tilt rates and/or relatively constant tilt rates. The methods and systems may also be used to simulate forming a wellbore in subterranean formations having a combination of soft, medium and hard formation materials, multiple layers of formation materials and relatively hard stringers disposed throughout one or more layers of formation material. Values of bit steerability and controllability calculated from such simulations may be used to design and/or select drilling equipment for use in forming a directional wellbore.

The UKIPO refused the patent application under the “mental act”, “program for a computer” and “mathematical method” exclusions in Section 1(2) of the UK Patents Act 1977.

The applicant, Halliburton, filed this Appeal which was decided on 5 October 2011 by HH Judge Birss QC as a Deputy High Court Judge. 

Solely a Mental Act (No): The High Court started with the “mental act” exclusion. In one view, this excludes anything capable of being performed mentally, regardless of whether or not the claims involve specific hardware (e.g. a computer). This broad interpretation has been favoured by the UKIPO following their Practice Note of 8 December 2008).  In this latest decision the judge held that  “the balance of authority in England is in favour of the narrow approach”, consistent with Aerotel, Kapur and T1227/05 Infineon of the EPO which makes clear that the mental act exclusion does not apply where there is relevant hardware in the claim, i.e. a computer implemented embodiment. 

Computer Program “as such” (No): HH Judge Birss also held 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.” 

Just a Mathematical Method (No): Also, the “mathematical method” exclusion did not apply, because “the data on which the mathematics is performed….represent’s something concrete (a drill bit design).”  

Therefore, the Appeal was allowed by the judge in favour of Hallibuton.

UK and EPO should come back into line: The judge also made an interesting observation on the differences between the EPO and the UKIPO in this area, saying that “as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO”.

As patent attorneys in the field of computer software, we hope that the UKIPO will take this decision into account and, in particular, make decisions that are more compatible with the treatment of software-related inventions by the European Patent Office.

For more information, contact our head of the Electronics team, Ian Robinson.