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