UK: Patentability of computer programs in UK confirmed by Courts and Patent Office

While the European Parliament has rejected the ‘Computer Implemented Inventions Directive’, the Patents Court has reconfirmed in Halliburton Energy Services Inc v Smith International (North Sea) Ltd and another [2005] EWHC 1623 (Pat) and in the matter of Patent Applications GB 0226884.3 and 0419317.3 by CFPH LLC, that, in the UK, software which shows a technological effect, and has the capability of being applied in industry, will be treated as patentable subject matter.

The Patents Court declared on 21 July 2005 that Halliburton's two disputed patents relating to the computerised process of design for drill bits were invalid, because they did not provide a sufficient explanation of how to perform the invention, and were directed to unpatentable subject matter. In the 84 page judgement however, Pumfrey J stated that if the detail of the patent claim had been phrased in a sufficiently detailed enough manner to explain the technological innovation and industrial application of the patents, the validity of the patents would probably have been upheld.

On the same day, the Patents Court handed down judgment in CFPH. This decision also reviews the issue of patentable subject matter in the context of business methods and computer software. It is a compelling read.

The UK Patent office has subsequently issued guidance on the 2- step test that will be applied, following the decision in Hitachi, namely:

• identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application)

• determine whether it is both new and obvious (and susceptible of industrial application) under the description of an "invention" in the sense of Article 52 of the European Patent Convention, which section 1(2) reflects.

For a full summary of the Halliburton decision, please see below:

Full Article

While the European Parliament has rejected the ‘Computer Implemented Inventions Directive’, the Patents Court has reconfirmed in Halliburton Energy Services Inc v Smith International (North Sea) Ltd and another [2005] EWHC 1623 (Pat) and in the matter of Patent Applications GB 0226884.3 and 0419317.3 by CFPH LLC, that, in the UK, software which shows a technological effect, and has the capability of being applied in industry, will be treated as patentable subject matter.

The Patents Court declared on 21 July 2005 that Halliburton's two disputed patents relating to the computerised process of design for drill bits were invalid, because they did not provide a sufficient explanation of how to perform the invention, and were directed to unpatentable subject matter. In the 84 page judgement however, Pumfrey J stated that if the detail of the patent claim had been phrased in a sufficiently detailed enough manner to explain the technological innovation and industrial application of the patents, the validity of the patents would probably have been upheld.

On the same day, the Patents Court handed down judgment in CFPH. This decision also reviews the issue of patentable subject matter in the context of business methods and computer software. It is a compelling read.

The UK Patent office has subsequently issued guidance on the 2-step test that will be applied, following the decision in Hitachi, namely:

• identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application)

• determine whether it is both new and obvious (and susceptible of industrial application) under the description of an "invention" in the sense of Article 52 of the European Patent Convention, which section 1(2) reflects.

For a full summary of the Halliburton decision, please see below.

To access the judgment in CFPH, please click here.

To access the Patent Office guidelines please click here.

Halliburton Energy Services (Halliburton) owned two patents for the design and use of drill bits for drilling in rock in the oil industry, using complex computer simulations and design programs. The first was for ‘roller cone bits, systems, drilling methods and design methods with optimisation of tooth orientation’, while the second related to a ‘roller cone drill bit, method of designing the same and rotary drilling system’. Both patents related to software programs that used data obtained from the analysis of the performance of different types of drill bits used at different angles and forces, together with other variables involved in the drilling of rock.

Halliburton brought proceedings against Smith International (Smith) for infringement of the above two patents, and Smith counterclaimed for revocation on the grounds that, amongst other things, the patents were invalid for insufficiency and that they were directed to unpatentable subject matter, namely a computer program or a method for performing a mental act.

An important principle of patent law is that the patentee must disclose sufficient information so that relevant members of the public are able to practice the patent once the monopoly expires. Article 83 of the European Patent Convention (EPC) requires that a European patent application "must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art." The corresponding provision of UK law is contained in section 14(3) of the Patents Act 1977 (‘the Patents Act’). The main hurdle for Halliburton in both the original patent application and in the present case was therefore to establish that their patents could be replicated with reference only to the specification and claims contained in the patents, by a person skilled in the art.

Halliburton was also required to show that the invention was "capable of industrial application" in accordance with sections 1(1)(c) and 4 of the Patents Act. This issue relates to the precise wording of the claims in the patent claims, and whether or not they could be judged to be purely theoretical in nature or related to an industrial process.

In addition, Halliburton’s patents needed to survive section 1(2) of the Patents Act, which states that ‘a program for a computer’ is not considered an invention for the purposes of the Patents Act.

This controversial section of the Patents Act has come under criticism from certain sections of industry as not giving a true reflection of the current position on the patentability of software programs in the UK. A consultation by the U.K. government to amend the provision in 2001 proved inconclusive, and it remains unresolved as to whether the wording used in the current section 1(2) will survive in the long term. In the immediate case it was unclear which approach the Court would take on this issue, particularly as the European Parliament had earlier in the month rejected the proposed ‘Computer Implemented Inventions Directive’, which had been expected to clarify this issue.

Sufficiency

Pumfrey J stressed that those involved in the preparation of patent applications must ensure that the disclosures give a full description of the creative step, and prior art where relied upon. In relation to the claims in the Halliburton patents, Pumfrey J stated that ‘it was a striking fact’ that this had not been the case, as there was no clear description that explained the techniques required to construct certain aspects of the physical object.

In relation to prior art, Halliburton had sought to use disclosures contained in other patents, as well as disclosures as part of the common general knowledge. Pumfrey J ruled Halliburton unsuccessful in both attempts. With regard to prior art contained in other patents, Pumfrey J held that some of the disclosures were not correctly incorporated by reference and therefore Halliburton could not rely upon them.

In relation to the disclosures Halliburton claimed were part of the common general knowledge, Pumfrey J stated that in relation to certain aspects there was no convincing demonstration of any common general knowledge, and the patent applications could not therefore be held to be sufficient.

Industrial application and patentable subject matter

Pumfrey J stated that whilst a computer software program that merely produces a design but does not result in a physical object would not survive under section 1(2), previous case law did establish that computer software programs are patentable to the extent that they produce a technical effect.

Pumfrey J commented that both Halliburton’s patents covered unpatentable subject matter, but that he envisiaged ‘that this defect could be cured by amendment’ of the patent applications. If the claim was sufficiently linked to the industrial activity, it would be a valuable invention restricted to the use of that physical object and therefore would be considered patentable subject matter.

This case demonstrates that even where a new invention is difficult to describe in words, it will be invalid unless the new technique is described in sufficient enough detail to enable it to be replicated by a person skilled in the art. It is also a reminder of the importance of properly incorporating disclosures from other documents by reference, because unless the information can otherwise be shown to be in the common general knowledge, the patentee will be unable to rely on such materials.

This judgment endorses the line of authority developed in a series of English cases that have considered computer software to be patentable (in particular the decisions in Merrill Lynch [1989] RPC 561 (CA), Fujitsu [1996] RPC 511 and [1997] RPC 608 (CA), Gale [1991] RPC 305). The crucial issue in deciding if an invention falls within the category of ‘excluded matter’ of s1(2) is not simply whether the invention is a computer software program, but whether the invention can be said to amount to a ‘technical effect’ which contributes as a matter of substance to the prior art.

Pumfrey J also cited the decision in T 0453/91 IBM/Method to illustrate the division between a method that only produces information, which will not be patentable, and one that results in a physical object, which will be patentable. Pumfrey J highlighted that in this case the addition of the words ‘and materially producing the [physical object] so designed’ was critical in the invention being categorised as patentable.

Importantly therefore, the judgment confirms that despite section 1(2) of the Patents Act, computer software programs can be protected by patent provided the tests of sufficiency and industrial application can be overcome.

This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq

The original publication date for this article was 12/09/2005.