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Thursday, August 03, 2006

Results of Consultation on the Inventive Step Requirement in United Kingdom Patent Law and Practice.

A

consultation under the title "Consultation on the inventive step requirement in United Kingdom patent law and practice" had been placed on the Patent Office website on February 03, 2006 for a period of just under 4 months (closing on 31 May 2006). The

consultation response document is available on the website on the

UK Patent Office:

"[...] Preliminary conclusions

The overall message of the responses appears to be that respondents are happy with our current practice. Where there are complaints, these tend to be confined to specific scenarios rather than 'across the board' failings. For example the 'obvious to try' formulation used recently by the UK courts when refusing some biotechnology patents caused concern to some respondents involved in that sector.

There was some concern about lack of consistency either within the UKPO itself, between the UKPO and the UK courts, or between the UKPO and Europe, but again these were limited to particular situations rather than applying generally.

Several comments were made that the quality of search is critical and this may well be a focus for future work. It certainly seems that the perceived difference in 'strictness' between the UK courts and UKPO is largely due to the more exhaustive prior art investigation that is done during post grant litigation of a patent.

The language of patent applications was a concern to some respondents with requests to simplify legalese in applications. There also appeared to be a lack of understanding among some respondents of the mechanism provided by section 21 of the Act for concerned third parties to make observations regarding the patentability of applications being considered.

As expected there were comments emphasising that a detailed analysis and well reasoned objection are vital in dealing with inventive step effectively. This analysis should include detailed consideration of such factors as why documents or references would be combined by the man skilled in the art. It is clear that a comprehensively argued objection is beneficial to the applicant
and to the overall processing of the patent and several respondents highlighted this in their replies. However it must be remembered that there are occasions (such as where an overly broad initial claim is likely to be heavily amended) when a less detailed objection might be appropriate. [...]"

There are only 26 responses in total. This appears not to be very much. Why does the affected industry not take such consultations more seriously?

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This consultation was not taken seriously by anyone in the industry because it was clearly not a serious consultation. It was peppered with market speak and inflammatory language like "trivial patents" and asked questions which even seasoned patent professionals such as myself couldn't begin to answer.

When this consultation was first announced, I came across this statement, reportedly from a Patent Office examiner:
"It has all the hallmarks of someone needing to be seen to be pro-active so as to get a good appraisal (essential these days with the new salary structure, where a significant proportion of pay is based on "performance") and is riddled with false assumptions and couched in the sort of language that now seems to be the norm with government department pronouncements.
Quality is defined in terms of the process, not the end product. What applicants want is a good patent, not a documented audit trail that the correct processes were followed."

While I would probably not be as harsh as this, the consultation always struck me as little more than a marketing or self-promotion exercise on the part of the Patent Office. It is difficult to see how the consultation could have any material effect on Patent Office practice since they are bound by the law relating to inventive step and a great deal of case-law on the matter. In the face of that, the proposal to amend secondary legislation to enshrine a "test" for inventive step seems to lack any real possibility of changing anything - as well as being scarily misguided!

# posted by Gerontius : 07 August, 2006 12:24

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