October 2011
The UK Intellectual Property Office (UK IPO) rejected a patent application by Halliburton, claiming a method of designing a drill bit. The method steps were simulating the performance of a drill bit, modifying its design, simulating the performance of the redesigned drill bit, and comparing the two performances.
The UK IPO rejected the application on the ground that the calculations involved could be carried out by a person, and were therefore a ‘mental act’, which is not patentable. Even if the simulation is performed by computer, it is no more than a computer program, which is also not patentable.
UKIPO practice in such cases is to allow such claims if they include an additional step of manufacturing a product according to the simulated design. However, in this case, Halliburton was unwilling to add a final step of manufacturing a drill bit.
The UK High Court overturned the decision of the UK IPO. The court ruled that a technical method, performed on a computer, should not be excluded from patentability as a ‘mental act’.
The Judge held that including a manufacturing step is unnecessary. The judge stated that the mental act exclusion should be construed narrowly, and that if the method is performed by a computer then it is not a mental act.
This clarification of the law allows the UKIPO to grant patents for simulating solutions to technical problems using computer programs, which have previously been held unpatentable in the UK.