Patent decision

BL number
Concerning rights in
Hearing Officer
Mr H Jones
Decision date
3 July 2008
Person(s) or Company(s) involved
Smith International Inc.
Provisions discussed
PA 1977 Sections 1(1)(b) & 1(2)
Excluded fields (allowed), Inventive step
Related Decisions


The invention related to a method of manufacturing a drill bit by designing the drill bit and then manufacturing it in accordance with the design. Only the design step were described or claimed in any detail: this involved simulating the performance of the drill bit whilst drilling through an earth formation, displaying the result graphically, varying a design parameter of the drill bit, and repeating the process until a performance characteristic was optimised. Following Halliburton and Cappellini/Bloomberg, the hearing officer held that this was patentable.

The hearing officer then applied the test laid down in Aerotel / Macrossan, and determined that the step involved in three of the four independent claims, that the adjustment was in accordance with the graphical display, was inventive. Claim 35 was held to lack this feature, and to be obvious in the light of the prior art cited.

The application was therefore remitted to the examiner for further amendment.

Full decision O/191/08 PDF document63Kb