Approved Judgment - EPLAW Patent Blog judgment...The appellant (Halliburton Energy Services Inc.)...

Neutral Citation Number: [2011] EWHC 2508 (Pat)

Appeal Nos: CH/2011/0154

CH/2011/0316

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

IN THE MATTER OF THE PATENTS ACT 1977

AND IN THE MATTER OF UK PATENT APPLICATIONS 0523735.9, 0802299.8 AND

0802300.4 IN THE NAME OF HALLIBURTON ENERGY SERVICES INC.

AND IN THE MATTER OF AN APPEAL FROM THE DECISION OF THE

COMPTROLLER-GENERAL OF PATENTS DATED 25 FEBRUARY 2011

AND IN THE MATTER OF UK PATENT APPLICATIONS 0802302.0 IN THE NAME

OF HALLIBURTON ENERGY SERVICES INC.

AND IN THE MATTER OF AN APPEAL FROM THE DECISION OF THE

COMPTROLLER-GENERAL OF PATENTS DATED 19 MAY 2011

St. Dunstan’s House

133-137 Fetter Lane

London EC4A 1HD

Date: 05/10/2011

Before :

HIS HONOUR JUDGE BIRSS QC (SITTING AS A JUDGE OF THE HIGH COURT)

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Richard Davis (instructed by Hoffmann Eitle) for the Appellant, Halliburton Energy

Services Inc.

Thomas Mitcheson (instructed by the Treasury Solicitor) for the Respondent, the

Comptroller-General

Hearing dates: 28th July 2011

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Approved Judgment I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this

Judgment and that copies of this version as handed down may be treated as authentic.

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Approved Judgment

Halliburton v Comptroller

His Honour Judge Birss QC:

1. This is an appeal from the Comptroller-General of Patents relating to the patentability

of computer implemented inventions.

2. The appellant (Halliburton Energy Services Inc.) made four patent applications before

the UK IPO. They were all rejected on essentially the same grounds, that the

inventions were excluded from patentability as schemes, rules or methods for

performing a mental act and as computer programs. The first three applications were

dealt with together at a hearing on 29th November 2010 before Mr Thorpe, Deputy

Director acting for the Comptroller. He gave his decision in writing on 25th February

2011 (O/080/11). The fourth application (GB 0802302.0) was dealt with afterwards

by Mr Thorpe on the basis of the papers already filed because the patentability

question was the same as that considered in the 25th February decision. Mr Thorpe’s

written decision rejecting that latter case was given on 19th May 2011 (O/170/11).

3. Halliburton appealed to the Patents Court and the matter came before me on 28th July

2011. Mr Richard Davis appears for Halliburton instructed by the patent attorneys

Hoffmann Eitle. Mr Thomas Mitcheson appears for the Comptroller instructed by the

Treasury Solicitor.

4. Mr Davis submitted that Mr Thorpe’s decision was wrong in law following the

existing approach to patentability questions as set out by the Court of Appeal in

Aerotel v Telco / Macrossan’s Application [2007] RPC 7 and Symbian v Comptroller

[2009] RPC 1. In this respect he submitted that Mr Thorpe had construed the mental

act exclusion too widely. He also submitted that the approach to patentability taken in

the UK at present was in conflict with the approach taken in the European Patent

Office. In the EPO at least one of his client’s applications had been examined without

much of a murmur and this, he submitted, highlighted the difference between the UK

and the EPO in this area of patent law. Mr Davis invited me not to follow Aerotel on

the footing that it was not in accordance with the approach of the EPO. He contended

that although when the matter came before the Court of Appeal in Symbian in 2008

there had not been a decision of the EPO Enlarged Board of Appeal on the point, in

May 2010 the EPO Enlarged Board of Appeal handed down their opinion G3/08,

concluding in effect that the EPO’s approach was indeed a settled one. He submitted

I was not bound by Aerotel in any event because since Aerotel the Patents Act 2004

had amended the Patents Act 1977 to bring it into line with the amended European

Patent Convention known as EPC 2000. EPC 2000, submitted Mr Davis, amended

the law of patentability in a material way as compared to the relevant provisions

considered in Aerotel.

5. Mr Mitcheson supported the decision of Mr Thorpe. He contended that the

applications were not patentable. He submitted that I should follow Aerotel and that

the changes in the legislation do not justify the course proposed by Mr Davis. He

submitted that Mr Thorpe’s construction of the mental act exclusion in s1(2) was the

right one as a matter of law.

6. Thus this case raises head on the question of the correct scope of the mental act

exclusion in the 1977 Act. It is a point which has arisen in a number of cases before

and on which there is conflicting authority. In order to deal with it in context, it will

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be necessary to deal with the way in which the patentability of computer implemented

inventions is addressed in the UK more generally.

7. However before dealing with the substance of the case at all I need to deal briefly

with a submission by Mr Davis about the nature of this appeal.

Nature of this appeal

8. CPR Part 52 r52.11 provides as follows:

52.11 Hearing of appeals

(1) Every appeal will be limited to a review of the decision of the lower court

unless-

(a) a practice direction makes different provision for a particular category of

appeal; or

(b) the court considers that in the circumstances of an individual appeal it would

be in the interests of justice to hold a re-hearing.

9. By r52.11(1) every appeal will be limited to a review unless either condition (a) or (b)

is satisfied. It has been clear hitherto that in general appeals from the Comptroller of

this kind are reviews rather than re-hearings (see Reef Trade Mark [2003] RPC 5

(CA), Blacklight Power Inc v Comptroller [2009] RPC 6 (Floyd J), and Patent Office

Practice Notice 1/2003 paragraph 10 [2003] RPC 46). However Mr Davis submitted

this appeal was by way of a rehearing and not a review because of the combined

effect of the reference in r52.11(1)(a) to a practice direction making a different

provision and then the terms of paragraph 9 of the Practice Direction 52 - Appeals.

That paragraph states:

Re-hearings

9.1 The hearing of an appeal will be a re-hearing (as opposed to a review of the

decision of the lower court) if the appeal is from the decision of a minister, person

or other body and the minister, person or other body-

(1) did not hold a hearing to come to that decision; or

(2) held a hearing to come to that decision, but the procedure adopted did not

provide for the consideration of evidence.

10. He submitted that paragraph 9.1(1) applied to the appeal from the second decision

because no hearing took place. He also submitted that paragraph 9.1(2) applied to

both appeals because the procedure did not provide for the consideration of evidence.

In my judgment Mr Davis is wrong on both counts.

11. As regards 9.1(1), it would be absurd if that provision were to be interpreted in such a

way as to cover the appeal from the second decision in this case. The second

decision is one in relation to which Halliburton had the unfettered right to a hearing

before the decision was made. Halliburton sensibly chose not to exercise their right to

a hearing because there was no point in the circumstances. That pragmatic choice

cannot be said to have given rise to such a fundamental change in the nature of the

proceedings as would justify a re-hearing on appeal.

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12. As regards 9.1(2), the point is simply wrong. An applicant is entitled to put evidence

before the Comptroller if they wish. The fact that it is rarely done and that

Halliburton did not do it on this occasion is not the point.

13. Thus neither limb of paragraph 9 of Practice Direction 52 applies in this case and so

r52.11(1)(a) does not apply either. This appeal is a review. I should add that in a

case of this kind I cannot see how the distinction between a review and a re-hearing

makes any difference.

The case

14. The case proceeded before me on the basis that all four applications stand or fall

together. In my judgment that is right as regards the issues which fall to be dealt with

on this occasion. It is therefore only necessary to consider one of them and, like Mr

Thorpe, I will consider application GB 0523735.9 (referred to as ‘735).

15. The ‘735 application was filed on 22 November 2005 and published as GB 2420433

A on 24 May 2006. The invention is concerned with improving the design of roller

cone drill bits for drilling oil wells (and the like). The point is to increase their

drilling efficiency and their operational life. The invention uses a computer

simulation of the interaction of the drill bit with the material being drilled to optimise

various design features of the drill bits. The use of computer simulation reduces or

eliminates extensive field testing. A fairly detailed description of the invention is set

out in paragraphs 5 to 12 of Mr Thorpe’s decision. Neither side criticised those

paragraphs. I will not repeat them. For the purpose of this appeal it is only necessary

to consider claim 1.

16. Claim 1 in the form to be considered on this appeal is set out below (I have added

numerals for ease of reference):

i) A method to design a roller cone drill bit with optimum drill design

parameters to form a wellbore in an earth formation, comprising:

ii) initially designing the drill bit using a respective cone profile for each

roller cone and at least one drill bit design parameter selected from the

group consisting of type of cutting element, size, configuration and

number of cutting elements, respective offset of each roller cone, number

of roller cones, number of rows of cutting elements in each roller cone,

number of cutting elements in each row, location of each cutting element

and orientation of each cutting element;

iii) simulating drilling portions of the earth formation with the initial drill bit

design including the respective cone profile for each roller cone and at

least one drilling parameter selected from the group consisting of weight

on bit, rate of penetration, rate of drill bit rotation, depth of borehole,

bottom hole temperature, bottom hole pressure, deviation of the wellbore

from vertical, distance from an associated well surface, type of formation,

hardness of formation and diameter of the wellbore;

iv) modifying the at least one drill bit design parameter for the drill bit;

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v) simulating drilling portions of the earth formation with the modified drill

bit design parameter and the at least one drilling parameter;

vi) comparing simulated drilling performance of the drill bit design prior to

modifying the at least one drill bit design parameter with simulated

drilling performance of the drill bit design after modifying the at least one

drill bit design parameter; and

vii) outputting to a resource the results of the method;

viii) wherein simulating drilling portions of the earth formation with the initial

drill bit design and with the modified drill bit design parameter each

comprise

ix) calculating a three dimensional mesh for each cutting element;

x) calculating a three dimensional mesh for each portion of the earth

formation used in the simulated drilling;

xi) simulating interaction of each cutting element with each portion of the

earth formation for a selected drilling time interval;

xii) determining contacts between each mesh segment of each cutting element

and mesh segments of the earth formation during the selected drilling time

interval;

xiii) calculating forces acting upon each mesh segment of each cutting element

during the selected drilling time interval; and

xiv) determining the cutting zone and respective force profile for each cutting

element.

17. Thus the claim is to a method of designing a drill bit. The basic steps of the method

are features (ii) to (vii). An initial drill bit design is specified by a user at step (ii). In

step (iii) the computer simulates the drilling of the earth formation by that drill bit.

This simulation includes taking into account the drill bit design and also at least one

drilling parameter such as rate of penetration. In step (iv) the drill bit design is

modified by the user in respect of at least one of the parameters making up the design.

In step (v) the computer then simulates the drilling of the same earth formation using

the same drilling parameter but with the modified design. This allows the user (step

(vi)) to compare the simulated drilling performance of the two designs. The results

are then “outputted” to a resource (step (vii)), such as a computer printer. Features

(viii) to (xiv) define in detail how the computer carries out the simulation of the

drilling task, using a form of finite element analysis.

18. A number of observations are important at this stage. First although the ultimate

point of all this design and simulation work is no doubt to make a drill bit to the

optimised design, the claim does not include the step of manufacturing a drill bit to

the design. If the claim was amended to include such a feature then Mr Mitcheson

accepts (I think) that it would satisfy the requirements of patentability with which this

case is concerned. However Halliburton do not wish to include such a limitation.

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They contend it is unnecessary and the claim is fine without it. One might think it

would be a small price to pay and wonder why we are bothering with all of this.

However Mr Davis was at pains to submit that a claim limited in that way would not

give his client realistic commercial protection for their invention. In the end of course

Halliburton’s motives are irrelevant but it does seem to me that Mr Davis’ point is at

least not fanciful.

19. Second, the claim includes the step of “outputting to a resource” (step (vii)). Such a

feature is present in all the relevant claims of the four parallel cases. There is a debate

as to whether those words in this claim (but not the others) amount to added matter. It

is common ground that that point is not live before me. If I allow the appeal it is

common ground that the matter should be remitted to the Comptroller for further

consideration, when points like that can be dealt with if necessary.

20. Third, there was an important dispute between the parties on the true construction of

this claim and in particular of output step (vii). The issue applies to all the relevant

claims but can be decided on this one. It is perfectly obvious, and would be obvious

to any skilled reader of the patent, that the invention involves the use of a computer.

The simulations are to be run on a computer (see my summary of how the claim

works above). However the claim never uses the word “computer”. Of course some

steps in the method are intended to be carried out by a person (such as step (ii)) but

others are not (such as step (iii)). Mr Mitcheson submitted however that the claim

was not limited in such a way that a computer was mandatory; he contended that, as

drafted, the crucial simulation steps (such as step (iii) and so on) could cover

simulations performed by a person without a computer at all. Mr Davis submitted

that the “resource” in the phrase “outputting to a resource the results of the method”

(step (vii)) would be understood to be a computer resource - such as a printer or a

computer memory - and so in fact the claim is limited to performance of the

simulations on a computer. He said that his clients certainly wished the claim to be

limited to a computer implemented method and had no desire to cast the claim any

wider, such that if I was against him on the point of construction, he sought leave to

amend the claim to put the matter beyond doubt.

21. In my judgment the skilled reader would understand perfectly well that the

simulations referred to in claim 1 are computer simulations from reading the

specification as a whole. I also note that the simulations being “computer

simulations” is expressly referred to from p21 line 30 - p24 line 23 in the

specification. Moreover the reader would understand that “outputting” to a

“resource” is something computers do, not people. Accordingly I find that claim 1

(and its brethren) are limited to carrying out the simulations on a computer. They are

computer implemented methods.

22. Nevertheless there is no doubt the claim could be more clearly drafted and if the

application is to go further the examiner may wish to consider whether the claims

could be more clearly expressed in this respect (bearing in mind s14(5)(b) of the 1977

Act).

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

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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.

The Law

24. Sub-sections (1) and (2) of section 1 of the 1977 Act provide as follows:

1.—(1) A patent may be granted only for an invention in respect of which the

following conditions are satisfied, that is to say—

(a) the invention is new;

(b) it involves an inventive step;

(c) it is capable of industrial application;

(d) the grant of a patent for it is not excluded by subsections (2) and (3) or

section 4A below;

and references in this Act to a patentable invention shall be construed

accordingly.

(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—

(a) a discovery, scientific theory or mathematical method;

(b) a literary, dramatic, musical or artistic work or any other aesthetic

creation whatsoever;

(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.

25. These two sub-sections are among the statutory provisions that are specifically

mentioned in s.130(7) of the 1977 Act. They should have the same effect as the

relevant provisions of the EPC. In its current form (EPC 2000) those are in article 52,

as follows:

(1) European patents shall be granted for any inventions, in all fields of

technology, provided that they are new, involve an inventive step and are

susceptible of industrial application.

(2) The following in particular shall not be regarded as inventions within the

meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;

(b) aesthetic creations;

(c) schemes, rules and methods for performing mental acts, playing games or

doing business, and programs for computers;

(d) presentations of information.

(3) Paragraph 2 shall exclude the patentability of the subject-matter or activities

referred to therein only to the extent to which a European patent application or

European patent relates to such subject-matter or activities as such."

26. Much ink has been spilt and many words spoken at conferences in seeking to interpret

these provisions and to find a consistent and reproducible way of applying them. In

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Aerotel Jacob LJ (giving the judgment of the court) considered the provisions as a

whole at paragraph 9. He explained that there is no evidence of an underlying

purpose behind the provisions as a group and nothing to tell you one way or another

whether they should be read widely or narrowly. The categories form a disparate

group with no common, over arching concept. Some categories are given protection

by other intellectual property laws and some categories are really so abstract as to be

meaningless (how could a scientific theory ever be patented in the first place?).

27. However at the heart of the law is the consistent principle that an inventor must make

a contribution to the art (that is to say the invention must be new and not obvious) and

that contribution must be technical in nature (susceptible of industrial application and

not within one of the areas excluded by Art 52(2)). These are the words of Kitchin J

as he then was in Crawford’s Application [2006] RPC 11, which was decided just

before Aerotel reached the Court of Appeal and referred to the cases up to that point.

If I may respectfully say so, I agree with him. In my judgment the observation

remains true today taking full account of Aerotel and Symbian as well as the other

cases decided at the Patents Court level since.

28. The modern approach to dealing with the exclusions from patentability is that laid

down by the Court of Appeal in Aerotel. Jacob LJ, giving the judgment of the court,

said that the court should adopt a four stage approach to dealing with issues of this

kind, namely:

(1) Properly construe the claim;

(2) Identify the actual contribution;

(3) Ask whether it falls solely within the excluded subject matter;

(4) Check whether the contribution is actually technical in nature.

29. As Jacob LJ made clear in Aerotel itself and as Lord Neuberger (giving the judgment

of the Court) emphasised in Symbian (paragraph 8), the decision in Aerotel did not

purport to represent a new departure in domestic law, not least because the court was,

at least prima facie, bound, and indeed it regarded itself as bound, by the approach

adopted in the three previous decisions of the Court of Appeal, namely Merrill Lynch

[1989] RPC 561, Gale [1991] RPC 305, and Fujitsu Limited's Application [1997]

RPC 608. Moreover as Jacob LJ explained (Aerotel paragraph 41) the four stage

approach is simply a reformulation in a different order of the test applied in Merrill

Lynch itself.

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. Also, in Symbian (paragraphs 48 to 51) the Court of Appeal made it clear that there

has been a consistent line of jurisprudence in this area following Vicom (T6/83),

including Merrill Lynch and Gale and that it should be followed today. The change in

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approach by the EPO Boards embodied by Pension Benefit (T931/95), Hitachi

(T2587/03) and Microsoft/data transfer (T424/03) should not be followed. Lord

Neuberger (giving the judgment of the court) said this:

48. We turn to address the issue whether the Application in this case was excluded

from registration on the ground that it was a “program for a computer … as

such”. The mere fact that what is sought to be registered is a computer program is

plainly not determinative. Given that the Application seeks to register a computer

program, the issue has to be resolved by answering the question whether it reveals

a “technical” contribution to the state of the art. Despite Mr Prescott’s sustained

and elegant, and not unjustified, attack on the vagueness and arbitrariness of the

term “technical”, that question embodies the consistent jurisprudence of the

Board (even though the precise meaning given to the term has not been

consistent), and it has been applied by this court in Merrill Lynch, Gale, and

(arguably with an inconsistent result) Fujitsu; indeed, it was accepted, through

stage 4, in Aerotel.

49. In deciding whether the Application reveals a “technical” contribution, it

seems to us that the most reliable guidance is to be found in the Board’s analysis

in Vicom and the two IBM Corp. decisions, and in what this court said in Merrill

Lynch and Gale. Those cases involve a consistent analysis, which should

therefore be followed unless there is a very strong reason not to do so. As

explained above, although they use the same language, some of the subsequent

decisions of the Board suggest a rather different analysis but they are mutually

inconsistent and have been doubted in Aerotel. Of the subsequent decisions of this

court, Fujitsu suggests the same analysis on the face of it, but, in truth, it may

represent a departure in the opposite direction to the subsequent decisions of the

Board, and Aerotel itself is not in point on this central issue.

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).

51. These considerations reinforce our view that, at least in this court at this

stage, we should try to follow previous authority, we should seek to steer a

relatively unadventurous and uncontroversial course, and we should be

particularly concerned to minimise complexity and uncertainty. These aims are

not necessarily mutually consistent, but, on this occasion, we believe they are

achievable, namely by following the analysis adopted by the Board in Vicom and

the two IBM Corp. cases, and of the Court of Appeal in Merrill Lynch and Gale.

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52. These considerations also manifest the difficulty of formulating a precise

test for deciding whether a computer program is excluded from patentability, and

suggest that it could be inappropriate to accept either of the rival simple

propositions (summarised at [17] above) advanced by the parties here. Bearing in

mind the multifarious features of computer programs and the unpredictable

developments which will no doubt occur in the IT field, we believe that it would

also be dangerous to suggest that there is a clear rule available to determine

whether or not a program is excluded by art 52(2)(c). Each case must be

determined by reference to its particular facts and features, bearing in mind the

guidance given in the decisions mentioned in the previous paragraph.

53. Based on these principles, we consider that Patten J was right and that the

claimed invention does make a technical contribution, and is not therefore precluded

from registration by art 52(2)(c). To start with a defensive point, the program in this

case does not embody any of the items specifically excluded by the other categories

in art 52; thus, it is not a method of doing business (as in Merrill Lynch), or a

mathematical method (as in Gale), or a method for performing mental acts (as was

probably the case in Fujitsu).

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. A notable exception is the

outcome of Fujitsu. However the Court of Appeal in Symbian drew attention to that

case as having an arguably inconsistent result (in the passage quoted above and see

also paragraph 42 of the judgment) and I note that Fujitsu is not mentioned in the

important sentence at the end of paragraph 51 of Lord Neuberger’s judgment.

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35. The business method cases can be tricky to analyse by just asking whether the

invention has a technical effect or makes a technical contribution. The reason is that

computers are self evidently technical in nature. Thus when a business method is

implemented on a computer, the patentee has a rich vein of arguments to deploy in

seeking to contend that his invention gives rise to a technical effect or makes a

technical contribution. For example the computer is said to be a faster, more efficient

computerized book keeper than before and surely, says the patentee, that is a technical

effect or technical advance. And so it is, in a way, but the law has resolutely sought

to hold the line at excluding such things from patents. That means that some

apparently technical effects do not always count. So a computer programmed to be a

better computer is patentable (Symbian) but as Fox LJ pointed out in relation to the

business method exclusion in Merrill Lynch, the fact that the method of doing

business may be an improvement on previous methods is immaterial because the

business method exclusion is generic.

36. The Aerotel approach is a useful way of cutting through the cases like Merrill Lynch,

Macrossan and Gale in which more than one exclusion is engaged. Take a patent

claim consisting of a claim to a computer programmed to perform a business method.

What has the inventor contributed? If the answer is a computer program and method

of doing business and there is nothing more present, then the contribution falls solely

within the excluded subject matter. It can be seen not to be patentable at step 3,

before one gets bogged down in the argument that about whether a book keeping

system running more efficiently on a computer is a technical effect. Following

Aerotel the question has answered itself.

37. The “better computer” cases - of which Symbian is paradigm example - have always

been tricky however one approaches this area. The task the program is performing is

defined in such a way that everything is going on inside the computer. The task being

carried out does not represent something specific and external to the computer and so

in a sense there is nothing else going on than the running of a computer program. But

when the program solves a technical problem relating to the running of computers

generally, one can see that there is scope for a patent. Making computers work better

is not excluded by s1(2).

38. What if the task performed by the program represents something specific and external

to the computer and does not fall within one of the excluded areas? Although it is

clear that that is not the end of the enquiry, in my judgment that circumstance is likely

to indicate that the invention is patentable. Put in other language, 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. I emphasise the word “likely” rather than “necessarily”

because there are no doubt cases in which the task carried out is not within the

excluded areas but nevertheless there is no technical contribution at all.

39. So in Merrill Lynch and Macrossan the computer programs were unpatentable

because the task the program performed was a business method. In Gale the program

was unpatentable because the task it performed was a mathematical method (albeit the

reasoning was the other way round, starting from the mathematical method rather than

the computer program aspect).

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40. This Aerotel approach is the way in which Mr Thorpe dealt with the applications

before him. He sought to see if there was anything outside an excluded category

present in the patentee’s contribution. He identified the contribution in paragraph 29

of his decision and considered in detail whether it fell within the mental act exclusion

in s1(2). He considered the matter in great detail (paragraphs 31 to 74) and held that

it was excluded. He considered the computer program and mathematical method

exclusions much more shortly. He did not think the inventions were excluded as

mathematical methods (paragraph 97) but just as they were excluded by the mental

act exclusion so they were also excluded by the computer program exclusion. As Mr

Thorpe said (paragraph 101):

This is not surprising since the two issues are to a greater extent linked. And since

I found nothing technical that would take the claimed method outside of the

mental act exclusion, it follows that if the tool for enabling the method to be

performed is a computer program, as it is here, then the method must also fall

within the computer program exclusion.

41. In my judgment Mr Thorpe’s decision is an entirely orthodox application of the law

subject only to the question of the width of the exclusion of a scheme, rule or method

for performing a mental act. The question is whether Mr Thorpe’s decision as

regards the scope of the mental act exclusion was right.

a scheme, rule or method for performing a mental act

42. There are essentially two possible interpretations of this exclusion, a wide one and a

narrow one. The wide construction is that a method is “a scheme, rule or method for

performing a mental act” if it is capable of being performed mentally regardless of

whether, as claimed, it is in fact performed mentally. Read this way the exclusion

excludes methods of the type performed mentally regardless of how they are claimed.

So a claim to a computer programmed to carry out a method of performing a

calculation (say a square root), would not only be caught by the computer program

and mathematical method exclusions but would also be excluded by the mental act

exclusion because calculations are the kind of thing which are capable of being

performed mentally. On the wide construction this conclusion follows even though,

as claimed in this example, the invention clearly does not cover performing the

calculation mentally at all because the claim is limited to using a computer. This

wide construction is the one which Aldous LJ favoured provisionally in Fujitsu (see

p619 line 10 - 621 line 30).

43. The narrow construction is that the exclusion only excludes acts carried out mentally.

On the narrow construction a claim to a calculation carried out on a computer could

never be caught by the mental act exclusion because the claim does not encompass

carrying out the calculation mentally. The fact that calculations in general are the

kinds of thing which are capable of being performed as mental acts is irrelevant.

This narrow interpretation is the one favoured by Jacob LJ in Aerotel, doubting the

views of Aldous LJ on this point in Fujitsu. As Jacob LJ said (in paragraph 98 of

Aerotel):

…we are by no means convinced that Aldous L.J.'s provisional view is correct.

There is no particular reason to suppose that “mental act” was intended to exclude

things wider than, for instance, methods of doing mental arithmetic (every now

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and then someone comes up with a trick for this, for instance Trachtenberg's

system) or remembering things (e.g. in its day, Pelmanism).

44. In this case Mr Thorpe applied the wide construction. If the wide construction is right

then the ‘735 claim is excluded from patentability and subject to Mr Davis’

submission that I should rejected the Aerotel approach altogether, the appeal should

be dismissed.

45. Mr Thorpe followed the wide construction to mental act because he understood he

was bound to do so by the judgment of Pumfrey J in Halliburton v Smith [2006] RPC

2. That case had striking parallels to this one. Halliburton’s patent was for another

method of designing a roller cone drill bit. The relevant claims are set out in

paragraph 64 of the judgment. The claims did not contain any express reference to

the method being carried out on a computer nor did they contain an express “output to

a resource” step. Nevertheless Mr Mitcheson submitted that Pumfrey J had construed

the claims such that they in fact included an output step to a computer file known as a

“computer aided design” or CAD file. I am not certain Mr Mitcheson is right about

that. The paragraph Mr Mitcheson relies on (paragraph 94) does indeed describe the

result of the claimed method as being a CAD file and includes the words “if I am right

on the question of construction” but in the same paragraph Pumfrey J then refers to

the CAD file being input to a numerically controlled milling machine to produce

cones and refers to the cones being assembled into a bit body. This paragraph was

concerned with the question of infringement of the method claim under s60(1)(c) of

the 1977 Act (product obtained directly by means of the process) and in that context it

can be readily understood. To deal with s60(1)(c), the result of carrying out the

claimed process has to be identified. I do not think Pumfrey J was reading into the

claim itself a feature (output to a CAD file) which is simply absent from the language.

46. Pumfrey J addressed the mental act point at paragraph 207 to 218. He acknowledged

the judgment on mental act in Fujitsu and then said the following:

215. I am very reluctant to examine a large number of decided cases on this

question, since for my purposes I think the law is, as I have indicated, clear, albeit

difficult to apply: the contribution the inventor makes must lie in a technical

effect, and not merely in excluded subject matter. But it is suggested that this case

is on all fours with T 0453/91 IBM/Method for physical VLSI-chip design. In this

case, the Technical Board of Appeal considered the VICOM case (above) and

evidently felt unease with its distinction between a method of processing resulting

in an image transformed in a defined way (not allowable) with a method of

processing physical data corresponding to a physical entity (allowable). The case

was concerned with a claim to a method that delivered 'a mere "design" in form

of an image of something which does not exist in the real world and which may

or may not become a real object'. The object in question was a Very Large Scale

Integrated circuit, so there was no doubt that the claim was to a stage in

manufacturing the chip, but the Board considered the claim rightly rejected. They

allowed a claim to a method of making a chip in which the only features were the

excluded method and the words 'and materially producing the chip so designed'.

216. I have great sympathy with this approach. An untethered method claim may

well cover activities which have nothing to do with any industrial activity, but, if

the claim is tied down to the industrial activity it becomes a valuable invention

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restricted to its proper sphere. What cannot be plausibly suggested is that the

method is not freighted with the technical effect that is needed for patentability:

but the scope of the claim should be restricted to its technical field.

217. In the present case, claims 1 and 3 are directed purely to the intellectual

content of a design process, and the criteria according to which decisions on the

way to a design are made. They are not limited in terms to a computer program,

although no doubt are so limited as a matter of reality. They are thus firmly

within the forbidden region as schemes for performing a mental act. So I think

that these claims are bad because they are too broad, but an amendment of the

type described in T 0453/91 should dispose of the problem.

218. It might be supposed that such amendment does not affect the position 'as a

matter of substance', but I think this is quite wrong. The objection, in my view, is

to width of claim alone when the method has potential industrial utility, that is, a

potential technical effect. The objection to the claims in this case are to the form

of the claim, not to the substance of the invention.

47. Thus Pumfrey J followed closely on the EPO’s approach in VLSI Chip Design T

453/91. There a claim to a method of designing a silicon chip was not allowed but the

patentability problem was solved simply by adding the words “and materially

producing the chip so designed” at the end of the claim. So in the case before

Pumfrey J the claimed method of designing a drill bit was “firmly within the

forbidden region as schemes for performing a mental act” but that this problem could

be cured by an amendment of a similar type (such as adding the words “and making

the drill bit so designed”).

48. Mr Thorpe understood that Pumfrey J was adopting the wide construction of the

mental act exclusion. He is in good company since Jacob LJ in Aerotel said:

In Halliburton v Smith [2005] EWHC 1623 (Pat) Pumfrey J. held that claims to a

method of designing a drill bit were to methods of performing a mental act even

though they could be carried out by computer program. They were curable by

amendment to a process of manufacturing a bit using the design process. As we

have said we have doubts as to whether the mental act exclusion is that wide.

[Aerotel paragraph 118]

49. With respect to Jacob LJ (and taking due account of the fact that his observation was

no doubt aided by a submission by counsel appearing before him on that occasion) I

am not certain that Pumfrey J was adopting a wide construction of the mental act

exclusion. It seems to me that the reasoning in paragraph 217 of Pumfrey J’s

judgment is based on the narrow construction. In paragraph 217 Pumfrey J reasons in

the following way. As drafted the claims are directed to the purely intellectual

content of the design process. Although the invention is really about using a

computer program, to be precise the claims are not limited in terms to a computer

program. Thus they are firmly within the forbidden region as schemes for performing

a mental act because they are not limited in terms to a computer program. This

reasoning appears to me to be based on the narrow approach to mental acts. The

exclusion is only relevant because the claims are so wide that they can be performed

mentally.

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50. However whichever approach Pumfrey J was taking, the fact that he regarded the

problem as curable by an amendment to add in the step of making a drill bit is

important. Another perennial issue in this area of the law is the distinction between

matters of form and matters of substance. It is well established in the UK that one

cannot avoid the computer program exclusion simply by claiming a computer suitably

programmed (see Merrill Lynch and Gale). So Pumfrey J recognized that it could be

said that the amendment he required did not affect the position as a matter substance.

He did not accept that however because in his view the objection itself was to the

form of the claim and not to the substance of the invention. He held that the method

“had an industrial utility, that is a potential technical effect”. Designing drill bits is

after all an industrial activity. The objection was as to form - that the claims were so

broadly drafted and “untethered” to be within the forbidden region as a scheme for

performing a mental act. Once that formal problem was cured, the objection fell

away.

51. In any event, after Aerotel (which, insofar as Pumfrey J had taken a wide view of

mental act in Halliburton v Smith, had doubted it was correct) Pumfrey J returned to

the mental act issue in his judgment in Cappellini / Bloomberg [2007] FSR 26. At

paragraphs 7 and 8 he said as follows:

7. It is plain that the Court of Appeal in Aerotel thought that the "mental act"

exclusion was a narrow one. The rival views are summarised in the appendix to

the judgment at [94] to [98]. In summary, the rival contentions are that of Aldous

LJ in Fujitsu ("Methods of performing mental acts, which means methods of the

type performed mentally, are unpatentable, unless some concept of technical

contribution is present") and that of the Court of Appeal in Aerotel: "There is no

particular reason to suppose that "mental act" was intended to exclude things

wider than, for example, methods of doing mental arithmetic (every now and then

someone comes up with a trick for this, for instance Trachtenberg's system) or

remembering things (e.g., in its day, Pelmanism)."

8. As a matter of precedent, I am free to choose between these alternatives, while

acknowledging that the second comes with a clearly expressed doubt as to the

correctness of the first. As a practical matter, I doubt whether the difference will

normally be of concern. The views of the Court of Appeal in Aerotel make it

quite clear that, like most other problems that arise with a patent, the question of

patentable subject matter is essentially a question of the scope of the claim. If the

claim covers a method of arriving at a particular result by the exercise of rational

processes alone, then it is, in my view, a claim to a "scheme, rule or method for

performing a mental act". I adhere to the view that I expressed in Halliburton v.

Smith [2005] EWHC 1623 (Pat). That case was a case of a claim to a method of

design, in which certain calculations were to be carried out recursively,

modifying the results each time until a particular criterion was satisfied.

Obviously, such a method was particularly susceptible to performance by a

computer, but as a matter of principle the claim was not so limited. Nor was the

claim limited to the employment of such a method in the production of a physical

article. It would have been infringed had the person employing the method

stopped at the end of the necessary calculations. Such a case, in my view, can be

saved by limiting it to a method of manufacture of the resulting article. I do not

think it can then be objectionable. But standing alone, I would respectfully

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suggest that an algorithm capable of being performed by a human being mentally,

and complete (so far as the claim is concerned) when the algorithm terminates, is,

as a matter of literal meaning, a scheme … for performing a mental act. If the

physical article resulting from this design process becomes a feature of the claim,

it cannot, in my judgment, be objectionable. But it is objectionable, in my view,

unless "tethered" to that result. I do not, of course, say that every result must be a

physical article before the claim is allowable. But if I revert for a moment to the

four-stage test, there is no contribution lying outside excluded matter until the

claim also covers the physical result of performing the claimed algorithm.

52. Mr Mitcheson submitted that the reference in paragraph 8 above to an “algorithm

capable of being performed by a human being mentally” meant that Pumfrey J was

maintaining the wide construction of the mental act exclusion. I do not agree. For an

algorithm to be a scheme for performing a mental act Pumfrey J required two things,

first the algorithm must be capable of being performed mentally and second it must be

complete when the algorithm terminates so far as the claim is concerned. The second

condition is a reference to the judge’s earlier point that a claim in the objectionable

form was not limited to being performed by a computer and, without amendment,

would have been infringed had the person employing the method stopped at the end of

the necessary calculations. Such a claim could be cured by an appropriate amendment

to make sure that it could not be infringed by a person working alone. Therefore in

this passage Pumfrey J was certainly not adopting the wide construction of the mental

act exclusion. It seems to me he was adopting a narrow one.

53. The mental act exclusion came up again in Kapur [2008] EWHC 649 (Pat) before

Floyd J. In this judgment Floyd J again reviewed the same line of authorities (now up

to and including Cappellini) and held that the narrow view of the mental act exclusion

was the right one. Floyd J said:

19. In Cappellini and Bloomberg [2007] EWHC 476 (Pat) Pumfrey J held that, as

the reasoning about the mental act exclusion was not necessary for the decision in

either Fujitsu or Aerotel, he was free to choose between them as authority, while

acknowledging that Aerotel, the more recent, comes with a clearly expressed

doubt as to the correctness of Fujitsu. He considered that the exclusion will apply

if it is possible to infringe the claim simply by doing mental acts, such as

calculations. Although Mr Cappellini's application had been rejected on this

amongst other grounds, it is not clear to me that Pumfrey J in fact came to a

conclusion on this exclusion in the appeal. Be that as it may, the weight of

authority favours a rather narrow view of this exclusion, namely whether the

claim actually covers a purely mental implementation of the claimed invention.

20. In my judgment the narrow view of the exclusion is the correct one. More

specifically I think the correct view is that, provided the claim cannot be infringed

by mental acts as such, its subject matter is not caught by the exclusion. It seems

to me that if this were not so the scope of the exclusion would be unacceptably

broad, as well as being uncertain in scope. It follows that the exclusion will not

apply if there are appropriate non-mental limitations in the claim. In those

circumstances it will not be possible to infringe the claim by mental acts alone,

and the invention will not comprise a method for performing a mental act.

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54. There is no question that this is part of the ratio of Floyd J’s judgment since it was a

crucial part of his reasoning which led to the overturning of the decision of the

Hearing Officer on the point (see paragraph 37) and the basis for this part of the case

being remitted back to the Comptroller (paragraphs 38 and 39). Regrettably this clear

judgment does not appear to have been drawn to Mr Thorpe’s attention in the present

case.

55. The final case to consider in this line is Symbian [2009] RPC 1 (Court of Appeal).

The Court were not concerned with the ambit of the mental act exclusion but it was

mentioned in relation to Fujitsu. Lord Neuberger (giving the judgment of the court)

indicated that the court had some difficulty reconciling the outcome of the Fujitsu

case in relation to what constitutes a technical contribution with earlier decisions but

stated that ‘the actual decision in Fujitsu may well have been justified on the

alternative ground tentatively relied on by Aldous LJ, namely that the alleged

invention was a “method for performing mental acts”’ (paragraph 42).

56. Now the Court of Appeal were not considering the ambit of the mental act exclusion

at all in Symbian and the sentence I have quoted is all that is said on the topic.

However it would be disingenuous not to face up to the fact that Lord Neuberger’s

suggestion only works if the wide approach to the mental act exclusion is taken, as

was tentatively proposed by Aldous LJ in Fujitsu itself, but which has been doubted

in later cases. That is because in Fujitsu at least some of the claims could not be

infringed by mental acts alone (see claims 9 and 10 at p613 of the report). Indeed

claim 9 of Fujitsu is a claim “tethered” to a manufacturing step (compare Hallibuton v

Smith). Does this sentence in Symbian mean that the judgment of Floyd J in Kapur

has been overruled or even seriously doubted or that the reasoning subsequent to

Fujitsu on mental acts in Aerotel and Cappellini has been undermined? In my

judgment it does not. The ambit of the mental act exclusion was just not before the

Court of Appeal in Symbian. They were not focused upon it and its scope was not a

necessary part of the court’s reasoning.

57. So the balance of authority in England is in favour of the narrow approach to the

mental act exclusion. I will only add that, if the matter were free from authority, I

would favour the narrow interpretation on its own merits. The wide construction

seems to me to be uncertain in scope and I am not aware of any good reason why the

exclusion needs to be interpreted widely. On the other hand I can see a logic behind

the narrow interpretation, preventing patents being granted which could be infringed

by a purely mental process. Allowing for the possibility of patent infringement by

thought alone seems to me to be undesirable.

58. What of the EPO? For that Mr Davis cited decision T1227/05 (Infineon) of 13th

December 2006.

59. The Board in Infineon regarded the scope of the mental act exclusion as narrow. The

Examining Division had rejected the application because the simulation method

claimed (as the claims then stood) constituted a mental act or mathematical method.

However on appeal the Board indicated that a computer implemented embodiment of

that method would overcome the objection. The claims were duly amended and as I

understand the decision (see Summary of Facts paragraphs I - III) the introductory

words of claim 1 were in effect changed from “Method for the numerical simulation

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of a circuit …” to “Computer-implemented method for the numerical simulation of a

circuit …”. Thus in paragraph 3.2.1 of the decision the Board said:

3.2.1 While the invention may be preceded by a mental or mathematical act, the

claimed result must not be equated with this act. The present claims relate to a

simulation method that cannot be performed by purely mental or mathematical

means, not to the thought process that led to that simulation method

60. This is the same as the reasoning of Floyd J in Kapur. If the claim cannot be

performed by purely mental means, the exclusion is irrelevant.

61. It may be noted that in Infineon the Board followed the EPO’s general approach to

patentability which was doubted in Aerotel and so considered whether various

elements of the claim were technical in nature in order to assist the Examining

Division in relation to inventive step once the case was remitted following the appeal.

However this has nothing to do with their views of the scope of the mental act

exclusion itself. The difference between the EPO and the UK is not directed to the

width of the exclusions in Art 52 / s1(2) themselves, it is concerned with the place in

the analysis that they come into play. Therefore the Board’s view on the scope of the

mental act exclusion is relevant.

62. The further significance of this decision from Mr Davis’ point of view is that the EPO

Technical Board of Appeal revisited the earlier VLSI Chip Design/ IBM decision

T453/91 which Pumfrey J had followed in Halliburton v Smith as requiring the

introduction of an amendment to include a manufacturing step into a claim to a

method of designing something. In Infineon the Technical Board of Appeal held that

a manufacturing step was not necessary (as long as the claim did not otherwise fall

foul of the patentability requirements). They held that computer implemented

simulation methods can themselves be regarded as modern technical methods and

should not be denied a technical effect just because a physical end product is not

incorporated in the definition of the method steps. The relevant part of the decision

(paragraph 3.4) also states that this view is in line with a decision of the German

Federal Court of Justice of 13th December 1999 (X ZB 11/98 Logikverifikation).

Mental act - conclusion

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.

64. Accordingly when Mr Thorpe applied the mental act exclusion to this case he did so

on too broad a basis and his decision is ill founded.

Application of the Aerotel approach in this case

(1) Properly construe the claim;

65. I have construed the claim above. Importantly and unlike the facts of the case arising

in Halliburton v Smith, in my judgment in this case the claim is limited to a

simulation process carried out on a computer. In that respect it is similar to the claim

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allowed by the Technical Board of Appeal in Infineon. Although the claim in this

case could be better drafted, it is in fact a claim to a computer implemented method.

(2) Identify the actual contribution;

66. Mr Thorpe identified the contribution made by this invention in paragraph 29. He

said:

29. I will leave for a moment the issue of whether outputting the results to a

resource adds to the contribution. For the moment I am happy to proceed on the

basis of a slightly broader interpretation of what Mr Davis has proposed. The

contribution of the claimed invention is in my view, as a matter of substance:

A method of designing drill bits that includes simulation of the performance of

the drill bit based on calculating a three dimensional mesh for each cutting

element and for the earth formation and using that to determine the forces

acting on each mesh segment of the cutting element and then the forces and

stresses acting on each cutting element.

67. I agree with that statement save that it seems to me to be important to state that the

contribution is a computer implemented method of designing drill bits. Normally that

emphasis would not be very important, for example if the case was concerned with

the business method exclusion it would be irrelevant, but in this case, given the debate

about the mental act exclusion, it is critical.

(3) Ask whether it falls solely within the excluded subject matter;

68. Mr Thorpe’s view was that the case before him could not be distinguished from

Halliburton v Smith and that as a result the claim would not be patentable at least

unless it was “tethered” by an amendment to add a manufacturing step. Since no

such amendment was before him, he held the claim was not patentable. Mr Thorpe

was also concerned that he could not see how such an amendment could in fact

overcome the objection as a matter of substance in any event but since no such

amendment was before him, he did not have to grapple with that problem (see

decision paragraphs 65-66).

69. In my judgment Mr Thorpe’s difficulty with how a manufacturing step could make a

difference stems from the wide view of the mental act exclusion, which I have held to

be wrong. Indeed it seems to me that his difficulties in seeing how any amendment

could overcome the wide view are another reason for doubting the correctness of the

wide view.

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.

71. That does not mean it is necessarily immune from the computer program exclusion

but that is a different matter. Is it more than a computer program as such? The

answer is plainly yes. It is a method of designing a drill bit. Such methods are not

excluded from patentability by Art 52/s1(2) and the contribution does not fall solely

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within the excluded territory. Drill bit design is not a business method, nor a scheme

for playing a game nor (as I have held) is this claim a scheme for performing a mental

act.

72. Mr Mitcheson did submit that the method was a mathematical method. I note that Mr

Thorpe did not think so. No Respondent’s Notice was filed but Mr Davis was content

to deal with the point in any event. I agree with Mr Thorpe. 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 and the position here. In Gale the claim was broadly drafted and it was

nothing more than a mathematical method implemented on a computer.

73. In my judgment Aerotel question 3 can be answered in Halliburton’s favour.

(4) Check whether the contribution is actually technical in nature.

74. This is not a case in which the cross-check at step 4 presents any difficulties.

Designing drill bits is obviously a highly technical process, capable of being applied

industrially. Drill bit designers are, I am sure, highly skilled engineers. The detailed

problems to be solved with wear and ability to cut rock and so on are technical

problems with technical solutions. Accordingly finding a better way of designing

drilling bits in general is itself a technical problem. This invention is a better way of

carrying that out. Moreover the detailed way in which this method works - the use of

finite element analysis - is also highly technical.

75. It is clear that Pumfrey J regarded the method of designing drill bits in the case before

him in Halliburton v Smith as “freighted with the technical effect that is needed for

patentability” (see paragraph 217). His concern was not with the technical

contribution as a matter of substance - which he did not doubt - but with the form of

the claims (paragraph 218). It seems to me that there is no difference between that

case and this one in this crucial aspect.

Conclusion on the Aerotel approach

76. In my judgment claim 1 of ‘735 satisfies the requirement of patentability following

the Aerotel approach.

77. Looked at another way and echoing Crawford, for the purposes of this appeal I can

assume that the invention is new and not obvious since those points are not before me.

Thus the invention makes a contribution to the art. That contribution is obviously

susceptible of industrial application and, based on my findings of law, not within one

of the areas excluded by Art 52(2). Thus the contribution is technical in nature and

the invention is patentable.

The Comptroller’s Practice Notes on mental act

78. In the Comptroller’s Practice Note issued on 2nd November 2006 following Aerotel at

paragraph 13, the differing judicial comments on the scope of the mental act exclusion

as between Fujitsu and Aerotel were noted. The paragraph indicated that Examiners

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would lean towards the view expressed in Aerotel. In other words the Examiners

were (at least tentatively) going to follow the narrow construction of the exclusion.

Following Symbian the Comptroller issued a further Practice Note on 8th December

2008. Paragraph 8 addressed the mental act exclusion and referred back to paragraph

13 of the post Aerotel Practice Note. Paragraph 8 states “In future examiners will

object to the computerisation of what would have been a pure mental act if done

without the aid of a computer as both a mental act and a computer program as such”.

This is the wide construction and so, as one would expect, Mr Thorpe’s decisions in

this case are in accordance with the current Practice Note. The logic of the Practice

Note is that, on the strength of Symbian, the Examiners were now to follow the wide

approach to the mental act exclusion rather than the narrow one. However Symbian

did not decide that question. My decision in this case means that the approach

proposed to mental acts in paragraph 8 of the current Practice Note is wrong in law

and should not be followed. (For that matter the same conclusion follows from the

judgment of Floyd J in Kapur.)

Mr Davis’ wider submissions

79. Since I will allow the appeal, Mr Davis’ wider submissions, that the UK should now

depart from Aerotel and follow the EPO’s approach as embodied by Pension Benefit,

Hitachi and so on does not arise. I will only make the following brief observations

about the issue:

i) I do not accept the argument that the effect of EPC 2000 on the Patents Act

1977 by means of the Patents Act 2004 would make it open to me sitting in the

Patents Court to depart from the Court of Appeal in Aerotel and Symbian. On

this I respectfully agree with Patten J as he then was at first instance in

Symbian at paragraphs 46 - 48 [2008] EWHC 518 (Pat).

ii) In my judgment, correctly applied, there is no reason why different outcomes

should emerge from a consistent application of the approach based on the

consistent jurisprudence of the UK (and earlier in the EPO) and the current

approach in the EPO. Pumfrey J made the same point in Cappellini at

paragraph 9 when he emphasised that his concern with Pension Benefit was

not with the result, which was correct, but with the reasoning which led there.

iii) I detected in Mr Davis’ submission a familiar and illegitimate submission

which has been made before by those who argue that the EPO’s approach

should be followed. He submitted that the Examiner in this case had found

that the claim was not obvious and so the only hurdle left was the problem of

patentability. He urged me to take the EPO’s approach to patentability but

sought to take advantage of the UK IPO’s approach to inventive step. That

will not do. The EPO’s approach to patentability goes hand in hand with a

special approach to inventive step. If in Pensions Benefit, the EPO approach

to Art 52 had not been combined with a special new approach to inventive

step, then that business method based claim would have been patented. If that

had happened then there would be no doubt that the results achieved in the

EPO and the UK would be very different.

iv) It is far from clear to me that the EPO’s approach when applied as a whole and

correctly is any more favourable to patentees than the UK approach and when

Approved Judgment


I asked Mr Davis about this he did not suggest that it was. He did submit

however that there was a difference in attitude between the UKIPO and the

EPO to computer implemented inventions.

v) However, self evidently the law is not concerned with the attitude of either

Office. The difficulties perceived in the UK with the way the EPO now

approaches computer implemented inventions are genuine jurisprudential

concerns of respectful nature. As a matter of law computer implemented

inventions are just as patentable in the UK as in the EPO. The Patents Act is

in accordance with the EPC in that both contain an exclusion for computer

programs as such. That is a matter of legislation and in my judgment it is not

for any court to interpret that exclusion out of existence.

Conclusion

80. The appeals will be allowed and the cases remitted to the Comptroller.

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