Halliburton wins appeal on software patentability issue

Posted on 6 Oct 2011 by The Manufacturer

One of the world’s largest providers to the global oil and gas industry, Halliburton, has won an important appeal hearing in the UK overturning a previous decision on its simulation software.

According to Withers & Rogers, the decision makes it possible for businesses to obtain patent protection in the UK for various computer implemented design and simulation tools, amongst 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, for example in mining, or oil and gas operations. Objections were raised by the UK Intellectual Property Office (UKIPO) 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 hence fell within the ‘mental act’ exclusion from patentability.

Following an appeal hearing in the High Court in July, HHJ Birss QC ruled yesterday that the ‘mental act’ exclusion should be construed narrowly, such that it applies only, for example, to various specialist forms of mental arithmetic, or to memory improvement techniques. When considering patentability, the judge also commented on the differences in approach between the UKIPO and the EPO, concluding that although the UK approach was different, that didn’t matter as long as the result was the same.

Nick Wallin, patent attorney at Withers & Rogers and a leading UK expert on software-based patentability, having previously acted for Symbian during its high-profile challenge of the UKIPO’s approach to software patentability in 2008, said:

“The UKIPO’s approach on what can and can’t be patented in the software field is increasingly being chipped away. With this case 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.

“This decision will be 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.”