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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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In a very recent decision (Halliburton's Applications, 5 October 2011), the UK Patents Court has addressed the ambit of the exclusion to patentability of ‘schemes, rules and methods for performing a mental act' and applied the exclusion narrowly in allowing a claim to a computer implemented method.

The case involved an appeal against the refusal by the UK Intellectual Property Office of four patent applications by Halliburton Energy Services, Inc. relating to computer programs for designing drill bits.

The UKIPO argued that the ‘mental acts' exclusion extended to cover acts which could be performed mentally, regardless of whether the claim language specifies that the acts are performed by a computer program. But this approach was overruled.

Instead the UK Patents Court stated that what matters is whether the claim language encompasses acts which could be performed mentally. Adopting this approach, the UK Patents Court came to the conclusion "the contribution is a computer-implemented method and as such cannot fall within the mental act exclusion".

Further, as the claim was directed to the result of designing a better drill bit, the invention had technical content beyond just being a computer program and therefore was not excluded from patentability by virtue of being a computer program.

This decision is good news for a new generation of patent applications that focus on the innovation in how, with the aid of a computer, a new product is designed. There are many such applications in the semiconductor industry in particular.