

Software patent (designing drill bits) approved in UK - flipbrad
http://ipkitten.blogspot.com/2011/10/not-faking-it-h-h-halliburton-gets.html

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flipbrad
Some extracts from the judgement to summarise what happened (sorry it's still
long, but the judgement is 22 pages). Short comments in line, overall comments
below.

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23\. This case is by no means unique as an example of a computer implemented
invention in which the word “computer” is conspicuous by its absence from the
patent claims. I am quite certain that one reason for this is a desire by
applicants to try and play down the fact that their inventions are really
based almost entirely on computer software. It fools no-one and in some cases
makes things more complicated than they need to be.

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Patents Act: s1(2) It is hereby declared that the following (among other
things) are not inventions for the purposes of this Act, that is to say,
anything which consists of— [...] (c) a scheme, rule or method for performing
a mental act, playing a game, or doing business, or a program for a computer;
(d) the presentation of information; but the foregoing provision shall prevent
anything from being treated as an invention for the purposes of this Act only
to the extent that a patent or application for a patent relates to that thing
as such.

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30\. The difficulties in this area arise mostly in relation to inventions
which involve the use of computers. All the Court of Appeal cases (from
Merrill Lynch to Symbian) are about inventions implemented in software. The
simple problem is that computer programs (as such) are excluded by s1(2)(c)
(c.f. EPC Art 52(2)(c) and 52(3)) . Whether it was so clear in the past
however, one thing is clear today. An invention which makes a contribution to
the art which is technical in nature (to echo Kitchin J’s words in Crawford)
is patentable even if it is implemented entirely on a computer and even if the
way it works is entirely as a result of a computer program operating on that
computer. The outcome of the Symbian case proves that.

31\. [quotes Symbian]: 50. The fact that “the boundary line between what is
and what is not a technical [contribution]” is imprecise (as Nicholls LJ said
in Gale, and as was echoed by Aldous LJ in Fujitsu) may be attributable to
three causes, which are not mutually exclusive. First, national tribunals and
the Board may still be at an intermediate stage of working out and identifying
the precise location of that line; secondly, the problem may be inherent and
never wholly satisfactorily soluble; thirdly, there are competing views based
on different philosophies (the “open source movement represents one extreme,
that of companies such as the present applicant, the other). The uncertainty
is well demonstrated by the elusiveness of the meaning of “technical”, the
change of attitude manifested in the more recent decisions of the Board, the
contrasting outcomes in Vicom and Fujitsu, and indeed the possible
reconsideration of the correct view of computer program patents in the United
States (see Professor John Duffy: Death of Google's Patents? Patently-O Patent
Law Blog, July 21st, 2008).

32\. Thus when confronted by an invention which is implemented in computer
software, the mere fact that it works that way does not normally answer the
question of patentability. The question is decided by considering what task it
is that the program (or the programmed computer) actually performs. A computer
programmed to perform a task which makes a contribution to the art which is
technical in nature, is a patentable invention and may be claimed as such.
Indeed (see Astron Clinica [2008] RPC 14) in those circumstances the patentee
is perfectly entitled to claim the computer program itself.

33\. If the task the system performs itself falls within the excluded matter
and there is no more to it, then the invention is not patentable (see Symbian
paragraph 53 above). Clear examples are from the cases involving computers
programmed to operate a method of doing business, such as a securities trading
system or a method of setting up a company (Merrill Lynch and Macrossan).
Inventions of that kind are held not to be patentable but it is important to
see why. They are more than just a computer program as such. For example, they
self evidently perform a task which has real world consequences. As Fox LJ
said in Merrill Lynch (p569 at line 27), a data processing system operating to
produce a novel technical result would normally be patentable. However that is
not the end of the analysis. He continued: “however it cannot be patentable if
the result itself is a prohibited item” (i.e. a method of doing business).
When the result or task is itself a prohibited item, the application fails.

34\. The reasoning in Merrill Lynch means that the computer implemented
invention claimed there would not have been excluded from patentability if it
were not for the combined effect of two exclusions in s1(2) - computer
programs and (in that case) business methods. The cases in which patents have
been refused almost always involve the interplay between at least two
exclusions.

38\. "when the task carried out by the computer program is not itself
something within the excluded categories then it is likely that the technical
contribution has been revealed and thus the invention is patentable." [nb:
would this not cover Folding@Home; Journeyplanner, etc?]

63\. In my judgment the correct scope of the mental act exclusion is a narrow
one. Its purpose is to make sure that patent claims cannot be performed by
purely mental means and that is all. The exclusion will not apply if there are
appropriate non-mental limitations in the claim. [would this be as little as
storing to a hard disk?]

70\. Approached on the correct, narrow basis, the mental act exclusion is
irrelevant in this case. The claimed method cannot be performed by purely
mental means and that is the end of the matter. Put another way, the
contribution is a computer implemented method and as such cannot fall within
the mental act exclusion. [OMFG. There you have it. Take ordinary, everyday
mental step, call it X. For example, deciding whether to stand up or sit down,
depending on whether there is a chair close behind you. Now the Patent Office
cannot raise that specific objection (mental process) against any computer
implemented X]

72\. [...] Although obviously some mathematics is involved, the contribution
is not solely a mathematical method (on top of being a computer program)
because the data on which the mathematics is performed has been specified in
the claim in such a way as to represent something concrete (a drill bit design
etc.). That is an important difference between the position in Gale [algo for
efficiently calculating square roots] and the position here. [One Click
Ordering, here we come]

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Basically programs which do one of the other excluded things (business method,
doing maths, performing mental act, or presenting information, for example)
are out, and others can be in. And performing mental act can no longer count
towards a second strike, because he rules out the 'wide' view that it means
"anything _capable_ of being done mentally" but instead it means "anything
_the patent says is done_ mentally". Add software, and you're high and dry.

This might be case law as it is laid down (or is Birss QC just limiting
patentability rejections to slam-dunkable cases? i.e. "we don't know what
software per se is, therefore let's only activate that rejection when we can
also reject the invention on other exclusionary grounds!"), but it seems
inconsistent with the letter of the law.

Is the software exclusion worth anything at all, if it's only active when
another exclusion also is? That makes even less sense when you read that the
listed exclusions are only 'amongst other things'.

It then further beggars belief that this patent stands even though it is an
invention designed to speed up mental acts, doing mathematics and presenting
mathematical information - in other words arguably just such a slam dunk.

The most horrible thing about this judgement, I find, is that it clearly
allows Halliburton to sue anyone using computer simulations of drills
penetrating earth when the aim is to make better drill bits. But because the
patent doesn't actually say that - dismissed by Birss QC as 'poor drafting',
something that is potentially entirely resident on a computer (for example,
making drill bit designs that are never actually manufactured, but merely
protected under a different area of intellectual proterty, Registered
Designs), allows Halliburton to merely run this program day and night to
generate new designs to monopolise using IP, and block anyone else from doing
the same using the patent!

