[Ecommerce] UK Patent office on inventive step test

[Michelle Childs]

The UK Patent Office has just released its reponse to the consultation it
held last year on the inventive step test in UK patent law  and whether
any changes were needed. In summary the answer was no, however  it
acknowledged that there was concern in the high tech sector especially
software and further  anyalsis would be carried out in this area. See full
report here.
http://www.patent.gov.uk/response-inventive.pdf

 Below is a summary of the reports findings in The Register.

Michelle

http://www.theregister.co.uk/2007/02/12/inventive_step_report/

Patent Office 'inventive step' report dances out the door
Everything is just fine, thanks
By Lucy Sherriff
Published Monday 12th February 2007 14:25 GMT

 More research is needed to establish how consistently the test of
inventiveness is applied in assessing patent applications from high tech
fields.

This is the conclusion of the The UK Patent Office's public consultation
on the so-called "inventive step" test in UK patent law. But despite its
concerns in this one area, the Patent Office said the consultation showed
most people thought the law is tough enough as its stands.

According to Matt Cope, a senior patent examiner at the Patent Office says
that the research would most likely start off with an internal literature
review - a comparison of past patents. He did not rule out further public
consultation, if it is deemed appropriate.

But whatever is done, we won't have long to wait: "Ideally, we'll deal
with all the recommendations within 2007," he told us.

The inventive step, or obviousness test, is as follows: would a
hypothetical skilled man, who knows everything but does not have the
slightest spark of inventive ingenuity, come up with the same idea if he
knew all the prior art, but had not read the patent application?

The Patent Office says it is the most difficult part of the patent
examination process.

The consultation document was accessed almost 6,000 times and downloaded
almost 2,000 times during the consultation period. The Patent Office
received only 26 formal responses - seven from the tech sector, and six
from trade associations and other collective bodies.

The majority of respondents wanted the office to tread a middle ground,
balancing the needs of the patentee and those of third parties. On either
extreme, technology firms tended to want tighter processes, while
pharmaceutical firms thought the Patent Office was already too rigourous.

One respondent said: "My contention is that, if software is to be
patentable at all, the level of inventiveness required should be set very
high indeed. Otherwise it will do far more harm than good."

The report acknowledged the level of concern expressed by the tech firms
that responded, but argued that the solution did not lie in raising the
bar for inventiveness.

It noted: "There were also some suggestions that it is too easy to obtain
a patent for software (computer implemented inventions), although it may
be that, rather than this being an issue relating specifically to
inventive step, it was part of a more general opposition to patents in
this field."

Other respondents were more concerned that innovative work would go
unprotected, if the law is applied too rigourously. One cautioned: =93What
may seem trivial may be the culmination of many years=92 work and the
breakthrough that allows a technology to finally become commercial.
Therefore extreme care must be taken not to fail to grant such patents.=94

Although the consultation was carried out in the first half of last year,
the results have only been published now, the Patent Office says, because
staff were busy dealing with the implications of the Gowers Review.





--
Michelle Childs -Head of European Affairs
Consumer Project on Technology in London
24, Highbury Crescent, London, N5 1RX,UK.
Tel:+44(0)207 226 6663 ex 252.
Mob:+44(0)790 386 4642. Fax: +44(0)207 354 0607
http://www.cptech.org

Consumer Project on Technology in Washington, DC
1621 Connecticut Ave, NW, Washington, DC 20009 USA .Tel.:
+1.202.332.2670,Fax: +1.202.332.2673

Consumer Project on Technology in Geneva
1 Route des  Morillons, CP 2100, 1211 Geneva 2, Switzerland
Tel: +41 22 791 6727