We are pleased to report that UKIPO patent examination practice concerning the link between computer programs and mental acts has recently moved closer to that of the EPO. We have argued for some time that the UKIPO's approach to excluded subject matter was incorrect, unfair and inconsistent with precedents set by the UK Courts. Earlier this month, His Honour Judge Birss QC decided a case in the UK High Court that goes some way to redress these issues.
The case concerns a UK patent application directed to a computer program for designing a drill bit by simulating drill bit performance (GB2443124A). The UKIPO refused the patent application filed by Halliburton Energy Inc for being a mental act, a mathematical method and a computer program as such. Halliburton appealed to the High Court who overturned the UKIPO's refusal.
In the last 2-3 years, the test applied by the UKIPO in deciding whether something fell into the mental act exclusion was a "broad construction" of the exclusion. It essentially excluded anything capable of being performed mentally, regardless of how it is claimed. This meant that objections based on this test were routinely raised against computer-implemented inventions, no matter how clever or technical.
In this case, the judge held that the UKIPO's approach was wrong:
"In my judgment 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."
"Approached on the correct, narrow basis, 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. "
"That does not mean it is necessarily immune from the computer program exclusion but that is a different matter. 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 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."
The judge then went on to deal with the other grounds of refusal:
"Is it more than a computer program as such. The answer is plainly yes. It is a method of designing a drill bit."
As to mathematical method, whilst mathematics was involved, "the data on which the mathematics is performed….represent[s] something concrete (a drill bit design)."
Allowing the appeal, the Judge concluded with the statement that "as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO."
The UKIPO have indicated they will not appeal and that Examiners will now apply the narrow approach when considering the mental act exclusion.