This case follows an earlier UK judgement (Halliburton Energy Services Inc.’s Application) in respect of the formulation of the contribution when assessing the steps of the Aerotel test: the widely accepted test under UK patent law for determining whether claimed subject matter falls within a category of subject matter excluded from protection. The Halliburton judgement was an appeal from a decision of a UK IPO Hearing Officer at first instance. In Halliburton, the invention was similar to an invention considered in an earlier judgement, and so the Hearing Officer was attempting to follow this earlier judgement, but the judge in this case concluded that the Hearing Officer’s interpretation of the mental act exemption in that earlier case was too broad.
The Landmark Graphics decision indicates a softening of the practice at the UK IPO in relation to computer-implemented inventions. Following Halliburton, when assessing the Aerotel test, the formulation of the contribution should not involve a forensic analysis, and a more general description of the contribution should be used for that test.
The Detail
This case is a consolidated decision relating to seven patent applications filed by Landmark Graphics Corporation at the UK IPO. Each application had previously been refused during Examination, because the Examiner thought that the claims were for subject matter excluded from protection. The seven applications respectively sought to protect different aspects of a method of geophysical modelling.
A hearing was held to decide on whether the applications related to subject-matter excluded from protection under s1(2) Patents Act 1977. In particular, the hearing revolved around the correct formulation of a “contribution” when applying the Aerotel test for determining whether subject matter claimed is excluded from protection.
To recap, the Aerotel test has four steps:
- properly construe the claim;
- identify the actual contribution;
- ask whether it falls solely within the excluded subject matter;
- check whether the actual or alleged contribution is actually technical in nature.
Landmark Graphics made particular reference to a Patents Court judgement relating to an appeal from a decision of the Comptroller to refuse an application on similar grounds, namely Halliburton Energy Services Inc.’s Application (Halliburton).
Here, the judge referred to an earlier judgement that a Hearing Officer had tried to follow, but in the process had taken too broad a view of the mental act exclusion by misinterpreting the way in which the judge there had applied the exclusion. The Hearing Officer thought that a “tethering step”, i.e. a subsequent manufacture of a drill bit, was needed to avoid the mental act exclusion and for a technical contribution to be made.
The Hearing Officer had defined the contribution as 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. This definition thus lacked the tethering step that the Hearing Officer thought was necessary to avoid the mental act exclusion.
While the judge agreed with this formulation, he nevertheless went on to define the contribution, for the sake of assessing the Aerotel steps, as a computer implemented method of designing drill bits, allowing the judge to highlight quickly the nature of the task performed by the computer program as something specific and external to the computer.
Consequently, when assessing the third step of the test (whether the contribution fell solelywithin excluded matter), the judge was readily able to say that the contribution was more than a computer program as such. The judge observed that “designing a drill bit is a highly technical process, capable of being applied industrially … The detailed problems to be solved with wear and ability to cut rock and so on are technical problems with technical solutions.“. He therefore concluding that the subject matter of the application in Halliburton did not fall within the categories of excluded subject matter.
Coming back to the Landmark Graphics decision, the Hearing Officer drew on the Halliburton judgement to suggest that, in Halliburton, the Applicant may not have been the first to invent a computer-implemented method for designing drill bits per se, but that it would seem that one can take a step back from the actualadvance over the state of the art when assessing the contribution for the Aerotel test and simply identify the field of endeavour in which the method is applied. In other words, it might not be necessary to conduct a forensic analysis of the difference between the invention and the prior art in order to assess what the inventor has really added to human knowledge.
Referring to the EPO Vicom decision, the Hearing Officer stated that it can be sufficient to determine whether the general task performed by the computer program is external to the computer and does not fall within one of the excluded areas in order to conclude that a technical contribution has been revealed. As an aside, the Hearing Officer did observe that where the task performed by the program is limited entirely to what is going on inside the computer, an invention can be patentable if it solves a technical problem relating to the running of computers generally, which is what comes out of an earlier UK Court of Appeal judgement (Symbian).
To take one of the applications in the present case as an example, during prosecution, the Examiner stated that the contribution was “a computer program for implementing the mathematical method of gridding a point cloud”. In contrast, the Hearing Officer, drawing parallels with the Vicom decision, found the contribution to be “a computer-implemented method for creating a representation of a geological structure which relies upona particular method of gridding point cloud”. This does not fall solelywithin any of the excluded categories.
Conclusion
Previously, when assessing the steps of the Aerotel test, an advance over the prior art, i.e. the difference between the prior art and the claimed subject matter, is identified and considered the contribution. However, the Office now seems to have confirmed that it is following the approach taken in Halliburton and a general description of the contribution should be used. The Hearing Officer, when assessing the actual contribution of a computer-implemented invention, took proper account of the task performed by the computerand determined whether that task fell outside the excluded categories.
