In an interesting recent UK-IPO hearing the Norwegian company Statoil had its patent application refused because the invention it described consisted of no more than a mathematical method and a program for a computer.
This case provides a helpful reminder of the importance in ensuring that a patent application includes enough technical detail.
The invention in this case related to a technique for generating an improved 3D earth model. The improved model could then be used to enable real-time steering of a drill in a borehole. The technique involved a mathematical method to predict the response of an induction logging tool along an arbitrary trajectory in a 3D earth model, and then to use this to synthesise an improved earth model.
There are not normally problems in obtaining patent protection for this kind of subject matter, which may explain why Statoil continued to fight the case. The critical point of failure was that the patent application did not describe how predicted and actual responses from a logging tool should be compared in order to create the improved 3D earth model. According to the Hearing Officer, the absence of this critical information meant that the application did not, in fact, create an improved 3D earth model, as Statoil alleged. Instead, the only remaining improvement was the mathematical method that was used for simplifying geometric calculations. The Hearing Officer found that these simplified calculations did not solve any technical problem, and, therefore, the application was refused.
It would be interesting to know whether Statoil would have experienced any problems if a full explanation had been provided of how to create the improved 3D earth model. It seems unlikely. In the event, the patent specification did not include enough technical detail about key steps, and the remainder was simply a mathematical method to be executed on a computer.
When dealing with computer implemented inventions and mathematical methods it is best to focus patent applications on the features that provide a technical improvement, and these features need to be fully described in the application as filed. If these features are found not to be present then, as in this case, there is not much that can be done to remedy the situation.