Tuesday, October 11, 2011

Halliburton Energy hits pay dirt

In Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) (05 October 2011) we see the English High Court address the misconception that computer-implemented inventions are by definition excluded from patent protection.  We see analysis of the commonly used exclusions that an invention of this nature is a mental act, a mathematical method and/or a computer program as such.

The UK IPO’s wide construction of the “mental act” exclusion is highlighted as flawed.  We can expect to see a revised Practice Note issue shortly.

The patent application

This case arose from an appeal from the Comptroller-General of Patents relating to the patentability of computer-implemented inventions.  There were actually four patent applications involved.  The Court dealt with UK Patent application 0523735.9 as representative of all four.

The patent application was filed on 22 November 2005 and published as GB 2420433 A on 24 May 2006.  The invention is concerned with improving the design of roller cone drill bits for drilling oil wells.  The point is to increase their drilling efficiency and their operational life. The invention uses a computer simulation of the interaction of the drill bit with the material being drilled to optimise various design features of the drill bits. The use of computer simulation reduces or eliminates extensive field testing.

Statutory exclusions

Sub-sections (1) and (2) of section 1 of the UK Patents Act 1977 provide as follows:

1.—(1) A patent may be granted only for an invention in respect of which the following conditions are satisfied, that is to say—
(a) the invention is new;
(b) it involves an inventive step;
(c) it is capable of industrial application;
(d) the grant of a patent for it is not excluded by subsections (2) and (3) or section 4A below;
and references in this Act to a patentable invention shall be construed accordingly.

(2) 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 discovery, scientific theory or mathematical method;
(b) a literary, dramatic, musical or artistic work or any other aesthetic creation whatsoever;
(c) a scheme, rule or method for performing a mental act, playing a game, or doing business, or a program for a computer;
(d) the presentation of information;
but the foregoing provision 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.

Programs for computers

The Court noted that computer programs (as such) are excluded by s1(2)(c) and the equivalent EPC provisions.  However, it was observed that, as proved in Symbian v Comptroller [2009] RPC 1:
’[a]n 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. 
Thus when confronted by an invention which is implemented in computer software, the mere fact that it works that way does not normally answer the question of patentability.  The question is decided by considering what task it is that the program (or the programmed computer) actually performs.  A computer programmed to perform a task which makes a contribution to the art which is technical in nature, is a patentable invention and may be claimed as such … 
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 … 
… [T]he law has resolutely sought to hold the line at excluding [business methods] from patents. That means that some apparently technical effects do not always count. So a computer programmed to be a better computer is patentable (Symbian) but … the fact that the method of doing business may be an improvement on previous methods is immaterial because the business method exclusion is generic. 
… Put in other language, when the task carried out by the computer program is not itself something within the excluded categories then it is likely that the technical contribution has been revealed and thus the invention is patentable.’
Scheme, rule or method for performing a mental act

The Court observed that there are essentially two possible interpretations of this exclusion, a wide one and a narrow one.

The wide construction is that a method is "a scheme, rule or method for performing a mental act" if it is capable of being performed mentally.  Regardless of whether, as claimed, it is in fact performed mentally. Read this way the exclusion excludes methods of the type performed mentally regardless of how they are claimed.

The narrow construction is that the exclusion only excludes acts carried out mentally. On the narrow construction a claim to a calculation carried out on a computer could never be caught by the mental act exclusion because the claim does not encompass carrying out the calculation mentally. The fact that calculations in general are the kinds of thing which are capable of being performed as mental acts is irrelevant.

The Court reviewed earlier precedents and concluded that the balance of authority in England is in favour of the narrow approach to the mental act exclusion.

It was observed that 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.

It was also observed that the approach proposed to mental acts of the current UK Practice Note is wrong in law and should not be followed.  Paragraph 8 assumes a wide construction and states that “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”.

The Aerotel test

The Court then applied what it referred to as the modern approach to dealing with the exclusions from patentability laid down by the Court of Appeal in Aerotel v Telco / Macrossan's Application [2007] RPC 7.

Properly construe the claim

The claim was found to be limited to a simulation process carried out on a computer.  Although the claim in this case could be better drafted, it is in fact a claim to a computer implemented method.

Identify the actual contribution

The contribution was found to be a computer implemented method of designing drill bits.

Ask whether it falls solely within the excluded subject matter

Approached on the correct, narrow basis, it was found that the mental act exclusion is irrelevant in this case. The claimed method cannot be performed by purely mental means.  Put another way, the contribution is a computer implemented method and as such cannot fall within the mental act exclusion.

The Court then asked ‘Is it more than a computer program as such? The answer is plainly yes. It is a method of designing a drill bit. Such methods are not excluded from patentability by Art 52/s1(2) and the contribution does not fall solely within the excluded territory.’

Drill bit design was found to be not a business method, nor a scheme for playing a game nor a scheme for performing a mental act.

The Court further observed that, although obviously some mathematics is involved, the contribution is not solely a mathematical method either (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.).

Check whether the contribution is actually technical in nature

It was observed that designing drill bits is obviously a highly technical process, capable of being applied industrially. Drill bit designers are highly skilled engineers. The detailed problems to be solved with wear and ability to cut rock and so on are technical problems with technical solutions. Accordingly finding a better way of designing drilling bits in general is itself a technical problem.

The invention was found to be a better way of carrying that out. Moreover the detailed way in which this method works - the use of finite element analysis - is also highly technical.

Further steps

The Court allowed the appeal and remitted all four cases to the Comptroller for further processing.

Photo courtesy of author Nicholas Vinacco under Creative Commons licence.


  1. To pass through an patent application is not that an easy task, something innovative should be there to get an patent application published. If one fails means fails forever.

  2. "Impact of Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) on ASEAN Jurisdiction: A case study for Singapore and Malaysia", Jeong CHun Phuoc

    This case has wide reaching impact on both Singapore and Malaysia jurisdictions concerning business-remated inventions and computer-related inventions.

    ASEAN Patent Offices are carefully reviewing this case for important guidelines.

    Senior Lecturer-in-Law
    Consultant External Law for an international Law firm
    (AZMI & ASSOCIATES, advocate and solicitors, Menara Keck Seng, Jln Bukit Bintang, KL)
    and Pioneer advocate in Competitive Legal Intelligence(CLI)
    **The above professional analysis is the writer's personal view and in no way represent the view/position of the research institutes/thinktanks/organisations to which he is currently attached to.
    email : Jeongphu@yahoo.com


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