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High Court: Computer simulations can get patent protection

Smacks down IPO on drill design sim ruling

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The High Court said that the UK's Intellectual Property Office (IPO) had wrongly applied UK patent law when assessing four patent applications for computer simulations of designs made by oilfield company Halliburton Energy. The IPO had previously ruled that the company's computer simulations were mental acts which cannot be patented under the UK's Patents Act.

Under the Act, inventions must be new, take an inventive step that is not obvious and be useful to industry in order to qualify for patent protection. An invention cannot be patented, according to the Patents Act, if it is "a scheme, rule or method for performing a mental act, playing a game or doing business, or a program for a computer ... as such". Other inventions that cannot be patented include "a discovery, scientific theory or mathematical method", according to the Act.

The IPO had rejected Halliburton's patent applications for computer simulations. The simulations related to improving designs for the workings of engineering drill bits used in the oil industry.

The IPO had wrongly considered the company's claims by assessing whether they were "capable of being performed mentally" rather than "in fact performed mentally", the High Court said. This meant the IPO had failed to recognise that the patent claims were only made in relation to the computer simulations themselves and were therefore not subject to the 'mental acts' patent exemption, the High Court said.

"When [the IPO's patent assessor] applied the mental act exclusion to this case he did so on too broad a basis and his decision is ill-founded," Justice Birss QC said in his ruling.

"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," the judge said.

Justice Birss QC said that Halliburton's inventions were not subject to any of the other exemptions to patentability. It said that the inventions merged mathematical calculations with computer software and were sufficiently technical to be considered patentable.

"Is it more than a computer program as such? The answer is plainly yes," the judge said in his ruling.

"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 held) is this claim a scheme for performing a mental act," he said.

"Although 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)," the judge said.

"For the purposes of this appeal I can assume that the invention is new and not obvious since those points are not before me. Thus the invention makes a contribution to the art. That contribution is obviously susceptible of industrial application and, based on my findings of law, not within one of the areas excluded ... Thus the contribution is technical in nature and the invention is patentable," Justice Birss QC ruled.

The IPO has indicated that it is unlikely to appeal the ruling, according to the IPKat blog.

Patents law expert Deborah Bould of Pinsent Masons said that the ruling was "good news" for Halliburton and offered "sensible and clear" guidance on how the mental act exclusion from patentability should be considered.

"There have been fewer cases considering the mental act exclusion than on the software and business method exclusions from patentability," Bould said.

"Halliburton has obtained approval from the UK High Court to patent simulating the operational performance of new roller cone drill bits used for drilling oil wells," said Bould. "Simulations reduce or eliminate the need for extensive field testing. Problems arose because the claim language was drafted very broadly. It did not tether the claims to simulations on a computer or to actually manufacturing improved drill bits. This was deliberate; a broad method claim will catch consultants designing drill bits as well as the drill bits actually manufactured.

"The judge held that the skilled reader of the patent would understand that the simulations are carried out on a computer, and that the claims are limited to this," she said. "He commented that avoiding this language in patent claims 'fools no one and in some cases makes things more complicated than they need to be'. He also held that the fact that the simulations could be carried out mentally was not enough to deprive Halliburton of patent protection," she added.

"The mental act exclusion is a narrow one," said Bould. "It only covers calculations actually carried out mentally. So, patent claims which are limited to calculations carried out on a computer fall outside the exclusion," she said.

"This decision should give Halliburton four patents with a good commercial scope, once granted. It is also encouraging for others wishing to patent other novel testing performed in virtual environments," Bould said.

Copyright © 2011, OUT-LAW.com

OUT-LAW.COM is part of international law firm Pinsent Masons.

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