Whilst Israel is reconsidering the patentability of software, the UK patent office and High Court are entrenched in technical effect and unpatentable mental acts.
The UK Intellectual Property Office has rejected the claims to a method of designing a better drill bit for use in oil drilling as being an unpatentable mental act. The hearing officer based this decision on obiter statements by Pumfrey J in Halliburton Energy Services, Inc v Smith International (North Sea) Ltd and others [2005] EWHC 1623 (Pat), 21 July 2005. He rejected the applicant’s argument that Pumfrey J’s approach was inconsistent with Aerotel because it did not assess the contribution as a matter of substance, and ruled that Halliburton was almost identical with the facts in this case and that that Halliburton was consistent with Aerotel. The claims would apparently be patentable subject matter if amended to include a suitable manufacturing step. Case: Halliburton Energy Services, Inc. BL O/372/09, 25 November 2009.
The UK High Court has also found electronic TV guide patents invalid, ruling that two patents relating to on-screen, electronic TV programme guides (EPGs) were invalid as being directed to unpatentable computer programs, with no relevant technical effect. Mann J also held that they were presentations of information “as such”, applying the same relevant technical-effect tests as UK law applies to computer programs. However, a third patent, which provided a facility for transferring recorded programs with their EPG metadata to another storage medium, was not excluded from patentability as it was considered as provided a relevant technical effect. However, all three patents were invalidated over prior art. Case: Gemstar-TV Guide International Inc and others v Virgin Media Ltd and another [2009] EWHC 3068 (Ch), 26 November 2009.
