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The UK-IPO's thoughts on inventive step: "nothing to see here, move along please"

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

The IPKat thinks that those nice people at the UK-IPO must have had a slow summer, as they have been making work for themselves in thinking yet again about the requirement for an inventive step in patent applications, in particular whether the requirement is being correctly applied across the different fields of invention they deal with. As they say, following a review of inventive step back in 2006 (noted by the IPKat here and here), and the responses they received as a result (noted by the IPKat here), the UK-IPO has been carrying out "further internal work" to assess the consistency of application of the inventive step test in different technological areas.

The UK-IPO have now issued a new report of their thinking following this work, and apparently welcome comments or thoughts on the emerging conclusions. Given that they received only 26 responses to the initial consultation, this is probably being a little hopeful.

The IPKat has taken a look at the report and sees that the conclusions the UK-IPO have arrived at are hardly earth-shattering. They can be quite effectively summarised in the final line, which states: "there does not appear to be a problem of inconsistency in the application of the inventive step test over different technology areas". The report, nonetheless, makes several recommendations on how inventive step should be assessed, particularly in light of the slightly revision of the Windsurfing test in Pozzoli. The authors are concerned, although not necessarily troubled, that examiners do not tend to pay much attention to assessing who the hypothetical skilled person might be, and what common general knowledge might be imputed to them, but they think that is not really a problem because lots of inventions are quite complicated.

The IPKat wonders whether users of the system, particularly those with experience of a wide range of subject matter, would agree with these conclusions. Merpel, being pernickity as ever, is troubled by the extensive use of 'CGK' in the report, as it seems to suggest a worrying trend towards an American-style obfuscatory approach to aspects of patent law, which she is very much against. We should all start worrying when they start referring to the NSBUAITAATPA...

Full post as published by IPKat on September 25, 2008 (boomark / email).