UK Patent Office Preliminary analysis of responses to consultation on inventive step

Further to our earlier blogger on the UK Patent Office public consultation on the inventive step requirement in UK patent law, the Office published its preliminary analysis of the responses received to this public consultation in early August.

Conclusions

At this stage, there is not really much to report. The review of inventive step was undertaken in response to international concern regarding patent quality worldwide but the preliminary analysis concludes that inventive step is generally handled appropriately at the UK Patent Office, "although there are some lessons to be learnt". However, the document makes it clear that the consultation forms only part of a wider internal review.

Preliminary results

In general, respondents were happy with the Patent Office's current practice. There were 26 responses to the consultation, 6 of them coming from representative bodies such as the AIPPI and CIPA.

• Complaints tended to be confined to specific scenarios, for example the 'obvious to try' formulation used recently by the UK courts when refusing some biotechnology patents caused concern to some respondents in that sector.
• The perceived difference in 'strictness' between the UK courts and UKPO was thought to be largely due to the more exhaustive prior art investigation that is done during post-grant patent litigation. Several responses stressed that the quality of search prior to grant is critical when assessing inventive step and the analysis suggests that this may be a focus for future work. (The analysis document notes that the concern that the UK courts were 'stricter' than the UKPO was mainly raised by respondents operating in the pharmaceutical sector.)
• The UKPO and the EPO were thought to be broadly equivalent in the 'level' of inventive step applied. The USA was felt by many to have a lower level and the Scandinavian countries were felt to be stricter.
• The analysis notes that a number of responses called for a harder inventive step hurdle and argued that innovation in the UK had been impeded by granted patent rights. However, the analysis also notes that most (but not all) of such responses were from respondents concerned about the patentability of software (which was not intended to be considered by this review in any case). This is a reminder that the anti software patent lobby remains strong and active. Its level of organisation on an EU-wide basis was seen during the fiasco last year over the failed draft directive for computer-related inventions. We came to hear word that there is concern that its lobbying of the Gowers Review may, potentially, have a disproportionate effect.

Peter Hill, Simmons & Simmons