Legal Updates

Intellectual Property – Patents – Test for Obviousness – Inventive Step Response

The UK Patent Office conducted a consultation on one of the tests for patentability – which is whether an invention has an ‘Inventive Step’.  The test is whether the invention is obvious to a person skilled in the art taking into account what prior art was available at the time when the patent application was filed.

The consultation looked at the wider significance of the ‘Inventive Step’ and whether there was any need for change.  It also considered the possibilities of refining the ‘Inventive Step’ test under UK and European law.

According to the Patent Office, there is considerable international debate concerning the level of invention required to justify the grant of a patent and a widespread view that perhaps some patents are being granted where there is little invention and that this impedes follow-through innovation. The recent Gowers Report touched upon this issue and referred to the consultation, stating that "it is important that the inventive step is set at the correct level". Examination for inventive step (also called "obviousness") has been a feature of UK patent law since the introduction of the Patents Act 1977 and the consultation sought comments on the level at which that step should be set, how to apply the law and how that application compares with other Intellectual Property Offices internationally.

The Patent Office has published the outcome of its Inventive Step Consultation. In its press release Sean Dennehey, Director of Patents, said:

‘…We wanted to go on the front foot in response to the international debate about whether the inventive step hurdle for getting a patent was too low and leading to so-called trivial patents. We are pleased that the consultation has confirmed both that there is no need for any change to the basic law as it relates to inventive step, and that our application of the law is appropriate. However, we recognise that in the face of changing technology we need to keep our practice under review to ensure we keep pace with the technological environment in which inventions are made.’

There were 26 responses to the consultation, from representative trade bodies and professional associations, individuals and firms. For a copy of the Response see:

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or complete statement of the law relating to the issues discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal advice should always be sought in relation to particular circumstances.




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