Out-Law / Your Daily Need-To-Know

Patent Office changes patentability approach

08 Aug 2005, 9:30 am

The UK Patent Office has announced a change in the way that examiners check patent applications for patentability, in the wake of two recent cases that supported the approach to patentability taken by the European Patent Office.

The new approach will not materially affect the scope of what is patentable, said the Patent Office.

In effect, patent examiners will now look at all the requirements for patentability together, rather than simply applying the “technical contribution” test to check whether each invention falls out with the exclusions laid down in the Patents Act 1977Identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application),” and

“Determine whether it is both new and not obvious (and susceptible of industrial application) under the description of an "invention" in the sense of” the European Patent Convention, reflected in the UK by the Patents Act.

Each case will, however, be assessed on its merits, and take full account of arguments put forward by applicants, said the Patent Office.

The change brings the UK approach to patentability into line with that adopted elsewhere in Europe.

The Patent Office argues that both approaches led to the same answer in nearly every case anyway, but following two UK cases published last month, which indicated that the approach currently taken by the European Patent Office is the better one, the Patent Office has now changed its practice.