(via IPKat). Halliburton has lost its appeal on its case against Smith international with regards to software for designing drill bits. The software patent involved in Halliburton v Smith protected a software simulation program for designing the drill bits. Halliburton sued Smith, claimed it held patents in both the drill and design software and that Smith was using similar software to produce comparable results. Smith questioned the patents’ validity. The design software patent contained a long technical description of drills and drill bits, plus a description of the algorithm used to design the software. The instructions to the person skilled in the art were extremely detailed and could only apply to that particular desired result. This seems precisely to be the type of patent that has a technical effect, however one defines it. Pumfrey J agreed that there was nothing wrong with the patent per se and that it fulfilled the requirements of technicality . The problem with the patent is that it did not have adequate disclosure to ensure that an average skilled person would be able to work the patent.
In the appeal, the main point discussed was that of disclosure. Art.83 of the EPC provides that an application “must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art”. Jacob J stressed how important this is for an application, and repeated the earlier judgement that there is nothing in the description of the software that would allow a person skilled in the art to work the patent. He said:
“Patents are meant to teach people how to do things. If what is “taught” involves just too much to be reasonable allowing for all the circumstances including the nature of the art, then the patent cannot be regarded as an “enabling disclosure.” That is the basic concept behind the requirement of sufficiency and one that lies at the heart of patent law […]. The setting of a gigantic project, even if merely routine, will not do. Moreover the analogy with genetic engineering and pharmaceutical inventions is not apt. The work that goes into bringing them to market relates to testing efficacy and safety – not in actually making the invented product.”
I truly believe that there is a new UK doctrine based on the latest UK-based software patent rulings. We are getting rational policy advice and rational cases. What am I going to complain about?
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