High Court remits software patent matter to Comptroller

Re Halliburton Energy Services Inc [2011] EWHC 2508 (Pat) is an appeal from the Comptroller. HHJ Birss, sitting as a High Court judge, allowed the appeal and remitted the case back for the Patent Office to try again. The Deputy Director, Mr Thorpe, acting for the Comptroller had rejected four applications, on the grounds that they were within the "mental acts" exclusion or were computer programs. The claims were to methods of simulating drill bit performance, without going on to deal with manufacturing the things once they had been simulated.

The law in this area was laid down by the Court of Appeal in Aerotel v Telco / Macrossan's Application [2006] EWCA Civ 1371 (in which Jacob LJ gave the judgment of the court) and Symbian v Comptroller [2008] EWCA Civ 1066 (in which he didn't, though the judgment of the Court which Lord Neuberger gave presumably contained a lot of Jacob). But there remains a great deal of dispute about the rules, with differences between UK Office practice and the EPO, complicated by the change of law in EPC 2000 (implemented in the Patents Act 2004, which came into operation after Aerotel: and there are other cases, including Kapur [2008] EWHC 649 (Pat) before Floyd J, which touch on the subject (and Kapur, which is more relevant than Symbian to the facts of the present case, was not brought to Mr Thorpe's attention.

In the present case, regarding the mental act exclusion, the judge decided that:

... 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.

He also decided that, applying the Aerotel  judgment, the invention was not excluded as a computer program. So the case was decided without having to go into some of the more exotic questions before it: but the judge had a quick go at them anyway. He did not agree that the 2004 Act permitted him to depart from the Court of Appeal judgments. He thought that, correctly applied, the different approaches in the UK and the EPO should not lead to different results (so the outcome would be right, just the route to it would differ, a matter mentioned by Pumphrey J in Cappellini and Bloomberg [2007] EWHC 476 (Pat). And he rejected the "familiar and illegitimate" argument (which he merely "detected" in counsel's submissions) that the EPO approach to patentability should be taken but in combination with the UK's approach to inventive step, which he said would lead to very different results in the two offices.

An interesting case, from which the judge concludes that

... as a matter of law computer implemented inventions are just as patentable in the UK as in the EPO.

Really? That sounds as if it might spoil the fun!