A High Court Case (Halliburton’s Applications) has clarified the UKIPO practice concerning the exclusion from patentability of inventions, which could fall into the mental act exclusions or be excluded for being a computer program “as such”.
The case concerned the designing of a drill bit for drilling oil wells using computer simulations and was initially rejected by the UKIPO as being a method of performing a mental act. The method was clearly limited to implementation on a computer and the High Court decision confirmed that the invention had a technical effect, the design of tooling. Previous case law has shown that a computer implemented simulation is patentable, and that it was not necessary to limit the scope of a claim to a product produced as a result of the simulation.
The Halliburton case confirmed that technical design methods are patentable even when the method is entirely implemented on a computer. The “mental act” exclusion is to be applied narrowly, that is, to apply only to methods that are actually performed purely mentally. Thus, computer-implemented methods are not considered to fall under the exclusion even if they could be performed mentally and it was decided that the narrow interpretation was appropriate to the intention of the exclusion, which is to prevent the infringement of patents by thought alone.
Claims specifying the use of a computer will not be excluded as a mental act, but they do still need to overcome the exclusion of being a computer program “as such”, especially if the invention does not have the required “technical contribution”. This confirms the UKIPO approach to computer-implemented inventions over the last few years.
MENTAL ACTS AND COMPUTER PROGRAMS