07 Oct, 2011

UK-IPO overruled as UK Courts once again support a more lenient approach to patentability – 

The High Court has overturned a decision of the UK Intellectual Property Office (UK-IPO), explicitly confirming that technical design methods are patentable, even where the method is implemented entirely on a computer (e.g. simulation software).

The UK-IPO had previously rejected a series of patent applications from Halliburton describing methods of designing a roller cone drill bit using various computer simulations. The UK-IPO rejected the applications on the basis that they related to methods for performing mental acts, which are excluded from patentability by UK law. The High Court has now rejected this on appeal, holding that Halliburton’s inventions are not methods of performing mental acts on the basis that they are clearly limited to implementation on a computer, and that the exclusion from patentability applies only to methods performed mentally.

Mark Kenrick, Partner at Marks & Clerk, comments: “UK patent law excludes mental acts, computer programs and mathematical methods as such from patentability. However the High Court has made it crystal clear that an invention relating to a process for designing drill bits is neither just a computer program nor a mere mathematical method. It provides something technical – a drill bit design process – outside both of these exclusions. Furthermore, such a method cannot be considered to be a mental act given its computer implementation. Consequently it is now plain that technical processes are patentable even if they are entirely computer-based in their implementation.

“The UK-IPO has unfortunately earned a reputation as being relatively hostile to software patents as compared with the European Patent Office. This decision shows clearly that the exclusion relating to mental acts is a narrow one that should never affect the patentability of computer implemented inventions.”

The correct ambit of the exclusion relating to mental acts has been an issue of contention for some time in the UK, with different judges considering the exclusion to have different scope. This decision follows the EPO’s position that computer based simulation methods are inherently patentable. Yesterday’s ruling constituted a further clarification of the law in favour of patentability, following the landmark decision in Symbian (2008).


















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