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Monday, February 05, 2007

Final Report on Consultation on the Inventive Step Requirement in United Kingdom Patent Law and Practice.

Today, the

UK Patent Office has published the

final report on the

Public Consultation on the requirement of the inventive step held in 2006:

"[...] The overall message of the responses is that respondents are happy with current law and practice. Where there are difficulties, these are mostly confined to specific situations 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. [...]"

However, the entire consultation might be read with some caution. In August 2006, a pseudonymous patent practitioner

wrote in the comment section of this Blog at the occasion of the publication of preliminary results that the consultation was not taken seriously by anyone in the industry because it was clearly not a serious consultation. In his view it was peppered with market speak and inflammatory language like "trivial patents" and asked questions which even seasoned patent professionals such as he himself couldn't begin to answer. Nevertheless, UP Patent Office promises to take action as follows:

"[...] These conclusions follow directly from responses to the public consultation exercise and are fully consistent with recommendations made by the Gowers review. Follow-up actions indicated will be undertaken during 2007.
There is no need for any change to the basic law as it relates to inventive step.
There is a possible problem in the consistency of application of the inventive step test in high technology fields, and work will be carried out to investigate this further.
Continuing professional development for examining staff at the Patent Office will emphasise the need to maintain technological knowledge up to date, and to continually refine searching skills. This echoes recommendations made by the Gowers review.
Use of the facility to make third party observations on patentability under s.21 of the Act will be encouraged, such efforts already being in line with the recommendations of the Gowers review. [...]"

The Office had received only meagre 26 responses. These included responses from representative trade bodies and professional associations as well as individuals and firms. Patent Office says that work on the consultation was under way in parallel with the call for evidence by the

Gowers Review of Intellectual Property, but publication of this response has been delayed in order to take account of relevant Gowers Report recommendations.

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