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Thursday, 6 October 2011

Not faking it: H ... H ..Halliburton gets simulation patent after all

STOP PRESS: literally seconds after the IPKat posted this, an email from Judge Birss QC thudded into his in-box with the judgment attached.

Before the online revolution, writing
Newsflashes was a far more leisurely task
It's not yet available online, but yesterday's Patents Court for England and Wales decision of Judge Birss QC (taking time off from his busy schedule in the Patents County Court to sit as a Deputy High Court Judge) in Halliburton Energy Inc’s Patent has already been announced, at something approaching the speed of light, as a Hogarth Newsflash.  The news-flasher (if that be the correct term) is the IPKat's friend Richard Davis (Hogarth), instructed by Hoffmann Eitle on behalf of Halliburton.  Normally this Kat would not deign to comment on a decision on so mundane and uncontroversial as the patentability of computer software, but this case is an exception.  Why? Because it's the first time since the blog was founded in 2003 that a successful appellant, its instructing firm and the barristerial chambers have all commenced with the letter H.

As for the law, let Richard explain [with links added by the Kat, who hopes they are the right ones ...]:
"... This was an appeal from UK IPO’s refusal of Halliburton’s patent applications to methods of simulating drill bit performance. The appeal concerned the mental act, program for a computer and mathematical method exclusions. 
HH Judge Birss QC ... considered the various claims to methods of simulating drill bit performance, noting that those claims did not include any step of manufacturing a drill bit to any optimised design. 
The court considered the ambit of the mental act exclusion in some detail, deciding between two conflicting views. The first is a broad construction that excludes anything capable of being performed mentally, regardless of whether it is so claimed. This broad construction was that favoured by Aldous LJ in Fujitsu and was applied by the Hearing Officer at first instance (following the UKIPO’s Practice Note of 8 December 2008). The alternative narrower construction is that favoured by Jacob LJ in Aerotel and only excludes acts carried out mentally.
The judge held that “the balance of authority in England is in favour of the narrow approach”. He was fortified by the decision of the EPO in T1227/05 Infineon which makes clear that any computer implemented embodiment would avoid the exclusion. He also noted the judgment of Floyd J in Kapur to a similar effect. 
The judge gave the remaining objections short shrift. The computer program exclusion did not apply: “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).” This distinguished the case from Gale’s Application and rendered the claim patentable. 
Allowing the appeal, the judge’s observations on the wider question of possible divergence between the EPO and the UKIPO are of interest, concluding with the statement that “as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO".
Says the IPKat, after the years of debate and the battle between the United Kingdom and the arguably Disunited European Patent Office as to the proper legal yardstick for the evaluation of patentability of software-related inventions, can it be that we now have a state of serenity of which we can be justifiably proud, in which such inventions are "just as patentable in the UK as in the EPO"? Let's wait till the judgment is available before making a final pronouncement.  Merpel just wonders whatever happened to the anti-software-patent lobby which, only a couple of years ago, was so stridently vocal in its criticism of a concept which we are now starting to take pretty well for granted?  Come to think of it, whatever happened to all the Open Sourcerers ...?

Some recent Halliburton patent applications refused in the UK here, here and here
Hancock's Half Hour here


Steve McIntyre said...

-1 trolling

The self-serving IP lawyers are of course "starting to take pretty well for granted" software patents. The rest of the world is not. Frankly, the entire patent system should be dismantled in preference.

Anonymous said...

Why the comment about a "Disunited European Patent Office"?

Would the IPKat really prefer a system in which boards of appeal take their decisions on instructions from the President of the Office, the Vice President administratively responsible for the Boards, or even act in accordance with the Examination Guidelines written by a group of examiners (a proposition that surely would be considered preposterous in relation to a "real court")?

Or should the boards continue to be truly independent from any outside interference after all, in which case some degree of divergence will be inevitable (but nowhere near significant enough to talk about a "disunited European Patent Office").

In the view of the Enlarged Board of Appeal there is not divergence but development (G03/08, para 7.3.6 - The same should apply where the Boards' case law has developed over an extended period and in the course of several decisions has gradually arrived at solutions which clearly and justifiably move away from the
initial premise, ...

Anonymous said...

@ Steve McIntyre
... Frankly, the entire patent system should be dismantled in preference. ... and what would you have to say if people walked straight through your carefully tended flower beds (always assuming you have such)???

Jeremy said...

@Anonymous 1.55pm

You ask: "Why the comment about a "Disunited European Patent Office"?"

Don't you remember why Lord Justice Jacob called on the EPO to convene an Enlarged Board? It was because he said different bits of the EPO were applying different tests. The EPO's then President thought otherwise. But this was nothing to do with the IPKat -- who was merely reporting events!

Gentoo said...

"Whatever happened to the anti-software-patent lobby which, only a couple of years ago, was so stridently vocal in its criticism of a concept which we are now starting to take pretty well for granted? Come to think of it, whatever happened to all the Open Sourcerers ...?"

Who is the "we" here? We open sourcers are still around and still find software patents contemptible.

How edifying it is to see IP lawyer metaphorically rubbing their hands in glee and anticipation at large corporations tieing down society in yet one more direction.

You did not feel a need to provide an answer to the question posed regarding the differences identified on this blog between the connected rapidly evolving fashion market and the connected rapidly evolving software market.

What is it about software - your client list?

Of course, what might be being discussed here is that this software is a real example (rather than the allegorical braking system) of software tied to hardware.

Anonymous said...

I'd just like to say Hi to Steve from ARM, the IP licensing company.

Anonymous said...

@Anonymous (4:07PM)


Anonymous said...

The judge wrote: “as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO"

I wonder what Gentoo and other anti-software patent activists who keep accusing the EPO of "illegally granting" patents on such inventions have to say about this sentence...

Anonymous said...

@steve: Please let me know what fine patent attorneys you use at ARM that are of such an outstanding quality that they can take patents for granted (no pun intended, honestly). I am sure also others would be interested to know.

When I draft and file an application I never take the outcome for granted.

Gentoo said...

Hi anonymous @5.21 If you can find a quote by me accusing the EPO of illegality please post it here.

It is still my understanding that pure software patents have no validity in Europe. What is your understanding?

Anonymous said...

@Gentoo et al

The law (UK+EPO) is that computer programs *as such* are excluded from patentability.

The tricky part comes in defining what is meant by "computer programs as such". Anything under that umbrella term is excluded, anything outside of it is not.

The people who decry the EPO for illegally patenting software either forget the "as such" qualifier, or accuse the EPO of misinterpreting it - often their view of the law is that *all* computer programs are excluded, or at least those which do not have a physical effect on an external, physical entity (e.g. controlling an industrial process, engine management or, indeed, the infamous ABS).

zoobab said...

"I wonder what Gentoo and other anti-software patent activists who keep accusing the EPO of "illegally granting" patents on such inventions have to say about this sentence..."

Maybe the judge can show what kind of software is not patentable then? The kind of software that you print and never execute in a computer?

Anonymous said...

Gentoo, I don't know what is a "pure software patent" according to your understanding, so I can hardly answer your question...

I don't know about you personally, but FFII Europe, Eurolinux and others, whom you appear to endorse, are well on the record accusing the EPO of illegally granting software patents.

Gibus said...

“the data on which the mathematics is performed….represent[s] something concrete (a drill bit design).”

This is nonsense that even a 5 years old child can understand: 2 + 2 = 4, whatever is represented by these numbers: cars, apples, cats. This is always mathematics.

That's enough to say that HH Judge Birss QC's reasoning is just plain wrong.

The EU is currently discussing a project to implement a unified patent court that would take place of national courts for patent litigations. The plan include to train the judges of this unified court. It can be suggested to hire some teachers from nursery school in order for people like Judge Birss to understand what are mathematics and computer science.

P Dant said...

Gibus, 2+2 = 4 is mathematics as such (and unpatentable as such). That 2 apples added to 2 apples gives 4 apples is applied mathematics, and not unpatentable as such (though there may be other objections, such as obviousness, or lack of novelty or utility). I think you can see the distinction, even if you don't like it?

Anonymous said...

Gibus, your arguments are not advanced by resorting to personal attacks on HH Judge Birss. If you were to look up his CV, you would note that after having obtained a degree in Natural Science from Cambridge, he spent some time in the computer industry.

zoobab said...

"That 2 apples added to 2 apples gives 4 apples is applied mathematics, and not unpatentable as such"

So if I do in python:

>>> 2+2

Is it applied mathematics just because the calculation happened on a processor?

Gibus said...

@P Dant: "2 apples added to 2 apples gives 4 apples" is just as unpatentable as "2+2=4" because in the claimed invention in the first case is either about apples, which are not patentable per se, or the mathematical formula "2+2=4", which you agree is pure mathematics.

I think you are also seeing the point now whether you like it or not.

Btw, I'm sorry but there is nothing like "mathematics as such". There are mathematics, which is a way to manipulate symbols, that is something abstract, i.e. something that can be applied to concrete things. And of course there are things that are not mathematics.

@Anonymous, sorry I was not willing to make any personal attack to HH Judge Birss, just wanna joke in the style of the IPKat blog.

Anonymous said...

Gibus symbols are, by definition, not abstract, since they represent something. An "abstract symbol" is an oxymoron.

zoobab So if I do in python:

>>> 2+2

Is it applied mathematics just because the calculation happened on a processor?

No. It becomes applied mathematics when it is done with a useful purpose (so, making a silly argument on the Internet does not count). And patents have always been linked to "the useful arts".

This is just why the Boards of Appeal of the EPO have helpfully explained that a computer program product is not patentable if "the program, when running on a computer or loaded into a computer, brings about, or is capable of bringing about, a technical effect which goes beyond the "normal" physical interactions between the program (software) and the computer (hardware) on which it is run."

Also, more in line in this case (since not a computer program, but a design method was actually claimed), the BoA also found in another case that "even if the idea underlying an invention may be considered to reside in a mathematical method, a claim directed to a technical process in which the method is used does not seek protection for the mathematical method as such."

This said, I am not certain that in this particular case the BoA would have agreed with HH Judge Birss QC. In a similar case, T 453/91, the BoA refused a claim on a method for designing a VLSI chip, because the result (a design) would not be a "physical entity". So this is a case in which a national court not only goes as far as the much-maligned BoA of the EPO with respect to the patentability of computer-implemented inventions, but also quite a bit further (although T 453/91 was quite an old case, and the BoA may now consider that "a further technical effect" does not necessarily imply a "physical entity").

Gibus said...

@Anonymous : read carefully, I haven't said that symbols are abstract. I've said that mathematics is a way to manipulate symbols. The manipulation is abstract, i.e. you manipulate stuffs and forget what they represent.

In this sense the judgement referred in this post and the sophistry from BoA you've quoted are just ignoring what is mathematics and what is computer science.

Anonymous said...

Gibus Looking at Judge Birss' CV, it appears that he should know well what is mathematics and what is computer science. So do the members of the Boards of Appeal. On the other hand, you do not appear to be quite as well-informed on what are patents. Dismissing a detailed reasoning as "sophistry", without bothering to note in which way you consider that this reasoning is faulty, does not make a good argument. It is disheartening that doubtlessly intelligent critics of the patent system like you simply refuse to engage the patent system's logic. Your criticism could be much more solid, and indeed fruitful, if you at least tried to understand what you are criticising.

The whole point of patents (or of "utility" patents, as they are so helpfully called in the US) is to protect a new and inventive use of scientific principles that has an industrial applicability. The scientific principles involved may be abstract, and therefore not patentable "as such", but their concrete application may well be patentable. This is why a mathematical equation is not patentable as such, but a wing profile following that mathematical equation may well be patentable. This is so because in the second case, the terms of the equation do not exist in a vacuum, but are indeed symbols that represent specific technical parameters.

A patentee will most certainly not be allowed to "forget" what the terms in the equation represent in his patent, if he accuses somebody
of infringing his patent for using that same equation with a completely different purpose.

In the case judged by Judge Birss, the method was not "abstract": it specifically referred to a concrete technical device (a drill bit). Halliburton will not be allowed to use this patent against somebody using the same algorithm, abstracted of the meaning of its symbols, for something completely different.

Gibus said...

@anonymous maybe you can look at my CV, then you find that I'm very well informed on patent matters, and that I've even convince (not me alone of course) a whole European Parliament about the sophistry underlined above.

Sorry, we are just commenting on a blog, if you want more argument, you've got to read what I've written at long...

Anonymous said...

Gibus Knowledge of a subject has never been a prerequisite for arguing about it in parliament (especially not in the European Parliament, otherwise its debates would be very lonely affairs).
I'm also surprised to hear that you managed to convince a whole European Parliament about this subject. I've followed its deliberations since my teens, and it has never been reputed for being of one mind about anything, apart from the convenience of free lunches for MEPs. There certainly was little unanimity about the CII Directive, which was voted down after it was amended into such a self-contradictory mess that both sides decided to put it out of its misery.
If your rhetoric had been so successful, the EP would have passed a highly restrictive CII Directive that would not have allowed Judge Girss to come to this judgment. Enjoy your "success".

Gibus said...

@anonymous I don't know about any "CII" Directive, maybe you are talking about the swpats directive? The one which would have force all EU judges to adopt the sophistry that some sofwtare/mathematics are not "as such" and are therefore patentable? Well, this directive has been killed.

P Dant said...

I deny that apples are unpatentable per se. If you want to patent an apple, it must of course be novel and not obvious, but provided it passes those tests (and certain others, such as industrial utility) it will be patentable. I expect there are EP patents on apples, though I haven't checked.

Michael Howells said...

One aspect of the practice change was a reversal in the UKIPO practice concerning computer program claims. For several years previously, the UKIPO had allowed claims directed to a computer program if the method performed by the computer program was itself patentable. In light of the first step of the Aerotel/Macrossan four step test, to construe the claim, the UKIPO decided that claims to a computer program were not a permissible form of claim even if the underlying method was found to be patentable.

legacy computer

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