Closing the gap between software patentability in Europe and the UK?

The High Court recently handed down its decision in the case Halliburton Energy Inc's Patent.

Halliburton had four patent applications which were refused by the UKIPO under Article 1(2) UK Patents Act 1977. The relevant part of this Article states:

It is hereby declared that the following (among other things) are not inventions for the purposes of this Act, that is to say, anything which consists of:
a)...a mathematical method...
c) a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer...
but the foregoing shall prevent anything from being treated as an invention for the purposes of this Act only to the extent that a patent or application for a patent relates to that thing as such.

The same exclusions exist under European patent law.

For a number of years, there has been much debate as to exactly what is excluded by this article, and to the breadth with which these exclusions should be interpreted. With the growth of computer technology, this has been a particular issue for those seeking to obtain patent protection for computer software.

Halliburton's patent applications related to methods for designing drill bits by performing computer simulations of drill bit performance, but the claims did not include the step of manufacturing the drill bit. The UKIPO stated that the claims of these patents fell under the exclusions of "mental act", "program for a computer" and "mathematical method", and refused the applications. Halliburton appealed this decision to the High Court.

Mental Act

There are two conflicting views as to how this exclusion should be interpreted. The first is that it should be given a broad interpretation, excluding anything that is capable of being performed mentally regardless of whether that is how it is claimed. The second approach is that a narrow approach should be taken, and only those acts which are claimed as being carried out mentally should be excluded from patentability.

A number of recent cases, including UK cases Aerotel v Telco and Kapur, and the European case T1227/05, have taken the second approach. This was followed in this case, with HH Judge Birss remarking that "the balance of authority in England is in favour of the narrow approach". It was therefore found that the claims should not be excluded from patentability as mental acts.

Computer Program

The judge then considered whether the claims related to a computer program as such, as is required by Article 1(2) UK Patents Act 1977. He concluded that the claims related to more than a computer program as such, being a method of designing a drill bit. They therefore fell outside this exclusion.

Mathematical Method

Finally, HH Judge Birss stated that, in the claimed invention, the data on which the mathematics is performed represents something concrete (a drill bit design), and it therefore does not fall into the mathematical method exclusion.

Hence, the appeal was allowed by the judge in favour of Halliburton.

In his decision, HH Judge Birss also stated that: As a matter of law computer implemented inventions are just as patentable in the UK as in the EPO.

It is hoped that this is an indication of the intention of the UK courts to bring interpretation of the laws on software patentability more into line with that of the European Patent Office, and so begin to bridge the gap between what is considered patentable software in the UK and in Europe. 



24 October 2011