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.
