One of the world's largest providers of products and services to the global oil and gas industry, Halliburton, has won an important appeal hearing in the UK on the issue of software patentability. The decision is further evidence that the industry lobby - opposed to the stance taken by the UK Intellectual Property Office on the issue of software patentability - is beginning to win.
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Specifically, this latest appeal court decision makes it possible for businesses to obtain patent protection in the UK for various computer-implemented design and simulation tools, among other things, which may have previously been blocked by some specific UK exclusions.
Halliburton had filed several patent applications relating to a computer-aided design and simulation system, which they had developed for designing drill bits for drilling holes in the earth in mining, or oil and gas operations. Objections were raised by the UK Intellectual Property Office (IPO) and the application was subsequently rejected on the grounds that the design and simulation method was the sort of thing that could be performed mentally by an appropriately skilled engineer, and fell within the "mental act" exclusion from patentability.
Interpretation of 'mental act'
Following an appeal hearing in the High Court in July, HHJ Birss QC ruled yesterday (6 October 2011) that the "mental act" exclusion should be construed narrowly, such that it applies only, for example, to various specialist forms of mental arithmetic or memory improvement techniques. When considering patentability, the judge commented on the differences in approach between the IPO and the EPO, concluding that although the UK approach was different, that didn't matter as long as the result was the same.
As this ruling demonstrates, the IPO's approach on what can and can't be patented in the software field is increasingly being chipped away. The "mental act" exclusion can no longer be used in a blanket way to prevent engineers who are developing simulation and computer-aided design and simulation systems from obtaining patent protection for their inventions.
Ever since Symbian's successful appeal case in 2008, the industry lobby on the issue of software patentability has been gathering support and now has another favourable appeal outcome under its belt. It is only a question of time before the IPO's stance on the matter begins to shift.
This decision is particularly good news for those involved in the development of a wide range of computer-aided design and simulation technologies, as well as in other fields such as artificial intelligence or automatic recognition systems.
Nick Wallin is a patent attorney at Withers & Rogers and a leading UK expert on software-based patentability. He previously acted for Symbian during its high-profile challenge to the IPO's approach to software patentability in 2008.