UK Patent Office launches Consultation on Inventiveness

On Feb. 6 the UK Patent Office launched a consultation on the inventive step requirement in UK patent law. Responses from interested innovators, scientists, engineers, businesses and legal professionals are requested by 31 May 2006.

What is the purpose of the consultation?

The overall context is to consider: how well the current legislation maximises innovation and competitiveness whether too many "trivial patents" are being granted or whether innovation and competitiveness is best served by easy patenting with low hurdles? In particular, respondents are being asked to consider:

How the inventive step requirement is used in the UK patent system and how its use compares to other countries. And whether its parameters in the UK are set appropriately with respect to:

** the objectives of the legislation
** the impact on the role of the patents system in the economy
** the effect on third parties
** consistency and harmonisation with other countries,
** patent quality
** whether any aspect of the inventive step requirement should be modified.

If the consultation results in any change to the UK regulatory framework, it is considered that the most feasible way to implement such a change would be by amending the Patent Rules.

Why is this consultation being launched now?

There has already been speculation on this point. The consultation paper itself states that a review is timely partly because it is now some time since the introduction of the Patents Act 1977 but also because the inventive step concept has recently been the subject of debate and investigation abroad which has raised serious issues of patent quality and concerns over the issue of so-called "trivial" patents. It mentions in particular two recent reports in the US which discussed, inter alia, the influence that patent policy and competition can have on innovation and the balance to be struck between these influences and also circumstantial evidence of a drop in patent quality in the US. (Para 2.2 of the consultation document)

One of the reports discussed in particular the difficulties of applying the intentive step requirement to technologies such as biotechnology and gene sequencing. One will remember that the Gowers Review was set up by the Chancellor's Pre-Budget Report in 2005 to review the IP framework in the UK. However, the Patent Office materials do not say that this consultation is part of the Gowers review. It also seems slightly odd to consider amending this aspect of patentability unless other jurisdictions are doing the same.

A couple of points to note

"Trivial" Patents and Patent "Thickets". In the press release, the Chief Executive of the Patent Office, Ron Marchant, talks about the need to strike a balance for all businesses and innovators:

"An inventive step requirement which is too difficult for applicants to achieve can result in inventions that might deserve a patent not receiving protection, thus hindering the applicant in research and investment. However, the danger of an inventive step which is too easy to meet is that patents could be obtained for small changes or improvements which hamper the legitimate activities of third parties."

Obviously, the balance struck between these two extremes is of interest to our pharmaceutical clients in particular. In para 4 of Appendix A, the consulation specifically refers to allegations of the granting of “trivial” patents, particularly in "areas where the patenting of small incremental improvements allows the creation of patent thickets and portfolios designed to exclude competition to an unfair extent. The adverse effects of such situations are not limited to the constriction of competition in the home market, but are also particularly felt in developing countries that need access to patented medicines."

International Comparisons

Although the consultation asks for information on approaches taken in other countries, it also observes that there appears to be a wide measure of international agreement that the test for the presence of inventive step in s3 Patents Act 1977 (whether the invention is obvious to a person skilled in the art) is the appropriate basic requirement.

However, it also notes that several possible texts have emerged in international discussions on harmonisation in this area. These would require that:

** The person skilled in the art, having regard to any item(s) of prior art or common general knowledge would have arrived at the claimed invention (the European proposal).

**Any item(s) of prior art or common general knowledge would have motivated a person skilled in the art to reach the claimed invention (the Japanese proposal).

** Any item(s) of prior art or common general knowledge would have motivated, with a reasonable expectation of success, a person skilled in the art to reach the claimed invention (the American proposal).

Peter Hill, London