Friday, October 7, 2011

Computer Implemented Inventions in the UK

Halliburton Energy Inc’s Patent [2011] EWHC 2508 (Pat) Birss J

This recent decision of Birss J in the English Patents Court on the patentability of computer-implemented inventions is of some interest in light of the appeal pending before the FCA in 2010 FC 1011 under appeal A-435-10. While is about business methods, the decision of the FCA in Schlumberger 56 CPR (2d) 204 (CA), which dealt with computer-implemented inventions, it is relevant for its general approach to patentable subject matter, and it appears that the FCA in will consider the implications of Schlumberger: see communication of 2011-07-07. While Birss J’s decision is not high authority in itself, Birss J undertook a thorough review of the UK and EPO jurisprudence, which makes it clear that the application which was denied in Schlumberger would now be granted in England, despite the fact that the UK Patents Act, 1977 s 1(2)(c), following the EPC Art 52(2), expressly provides that “a program for a computer” is not patentable “as such.”

Because of the statutory difference, this conclusion is not directly relevant to Canadian law. Nonetheless, it is not unreasonable to look to international law, whether statutory or otherwise, as a guide to general principles. The Commissioner did exactly this in the decision under appeal in Schlumberger, CD 441. Because of the paucity of Canadian case-law, the Commissioner’s decision was based primarily on US Supreme Court decisions. In an article in the forthcoming issue of the CIPR (which has just gone to press), “The Rule Against Abstract Claims: A Critical Perspective on US Jurisprudence,” (2001) 27(1) C.I.P.R. 3 (draft here), I argue that Schlumberger was wrongly decided because the USSC decisions on which it was based are inconsistent with SCC jurisprudence. The Commissioner in Schlumberger also pointed at p.16 to the statutory restriction in English law as supporting its conclusion, upheld by the FCA, that a restrictive approach to computer-implemented inventions should be adopted. It is now clear that the Commissioner’s interpretation of the English provisions was overly simplistic, and consequently incorrect. That English law has now adopted a generous approach to the patentability of computer-implemented inventions, despite the statutory restriction, reinforces the conclusion that Schlumberger was wrongly decided.

The application at issue in Haliburton claimed a method of designing a drill bit by varying relevant parameters and simulating the cutting performance of the bit on a computer. The inventive aspect lay in the particular method of finite element analysis that was disclosed. There are two points to note. First, Birss J at [21] construed the claim as being limited to the method when carried out on a computer. It would not be infringed by a person carrying out the analysis using pencil and paper (if that were possible). Second, the method was implemented entirely on a computer, with input at some steps (choosing parameters) from a person.

The first point, Birss J noted that the applicant could have avoided any problem of subject matter by including a step of manufacturing a drill bit according to the resultant design [18], but it chose not to, for the reason that the design firms would not directly infringe such a claim, and it would then be caught in the morass of contributory infringement (and see the Deputy Director’s decision under appeal at [72]). Birss J accepted that these concerns were “at least not fanciful.” This illustrates why claiming of inventions that are entirely computer-implemented has direct practical implications.

On the second point, Birss J held at [30] that notwithstanding s1(2)(c) of the English Act, “[a]n 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” (emphasis added).

On the scope of the prohibition of patenting programs for computers, Birss J stated at [32] that “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.” In other words, the prohibition bites only when the applicant has written a program requiring no inventive ingenuity, in order to perform an obvious task, and seeks to patent the program itself; in effect, when the applicant seeks to use patent law to claim a monopoly in uninventive “expression” that would normally be protected by copyright law (and thus subject to a defence of independent creation). Birss J also noted at [37] that “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).” And on the other hand at [38] “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 . . .that circumstance is likely to indicate that the invention is patentable.”

            Thus the scope of the prohibition on patenting programs for computers is very narrow. Birss J explained that most of the cases dealing with computer-implemented inventions did not engage the restriction on “programs for computers” at all, or at least not primarily. Instead, in cases where the claims were invalid, this was because the invention also triggered a different restriction, in particular business methods or mental acts.

            Since the Haliburton invention was clearly not a business method, Birss J dealt at length with the mental acts exclusion. While this exclusion is also based on a statutory provision, it is perhaps more directly relevant to Canadian law, as it is at least arguable that the prohibition on patenting abstract ideas encompasses a mental acts exclusion. Birss J noted that there were two approaches to that exclusion, one narrow and one broad [42]. The broad exclusion would exclude any method “if it is capable of being performed mentally regardless of whether, as claimed, it is in fact performed mentally.” Note that here “capable” means notionally capable – the Deputy Director had held Haliburton’s application unpatentable on the basis of the broad approach, even though there is no reason to believe that the finite element analysis could actually be carried out by any human being. In contrast, “[t]he narrow construction is that the exclusion only excludes acts carried out mentally.” Birss J concluded at [57] that “the balance of authority in England is in favour of the narrow approach to the mental act exclusion.” He added 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.”

Applying this law to the facts, Birss J had no difficulty in holding the application to claim patentable subject matter. It is irrelevant that it was carried out entirely on a computer, and it is clear that the method did not fall within an excluded territory [71]: “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.” Further, as a check, the contribution was clearly technical in nature [74]: “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.”

Applying the same logic to the application at issue in Schlumberger, it is clear that Birss J would have held the claims to be patentable subject matter. The claims were to a method of processing well logging data to determine characteristic properties of earth formations, in particular which layers were oil or gas-bearing. That it is performed entirely on a computer is irrelevant, and the claim was clearly confined to a computer, so it would not fall afoul of the narrow mental steps restriction (though it would probably be caught by the broad approach to that exclusion). Determining where in a geological formation oil is found is not a business method, nor a mental act. Oil prospecting generally is a technical problem, and the method of combining data logs from different instruments in a way which allows identification of the nature of the formation is also technical. I would note that the claim at issue in Schlumberger was so broadly drafted that it appears to be little more than a computer implementation of a known technique, so I would question whether it would have been inventive at the time. But whether it is obvious is a different question from whether it is patentable.

In conclusion, in Schlumberger the Commissioner to looked to UK law to support a restrictive approach to the patentability of computer-implemented inventions. Now it is clear that UK law is not as restrictive as the Commissioner had thought. As Phelan J pointed out in, it is important to be mindful of statutory differences when considering foreign law. The express prohibition on patenting of computer programs would have justified a more restrictive approach to such inventions in the UK as compared with Canada. That the UK has settled on a less restrictive approach, despite that statutory provision, speaks in favour of a less restrictive approach in Canadian law as well.

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