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Archived updates for Thursday, December 02, 2004

UKPO Modifies Procedures for Business Method Applications

On November 30, 2004, the U.K. Patent Office announced in a Practice Note that it was "receiving an increasing number of patent applications relating to methods of doing business that are inherently unpatentable" and is therefore making two changes to the way it handles business method applications "for which the examiner considers there is very little, or no, prospect of grant because the invention is inherently unpatentable:"

  1. The examiner will invite the applicant to a hearing at an earlier stage in the examination process. Upon receiving the response from the applicant to the first examination report, the examiner will re-consider whether the application discloses a patentable invention. If the examiner remains of the opinion that there is no prospect of a patent being granted, the application will be referred to a Hearing Officer immediately for a decision on whether the application should be refused. The examiner will not engage in further exchanges of correspondence about any other matters that might be outstanding.
  2. In appropriate cases, Hearing Officers will issue abbreviated decisions. If the Hearing Officer decides to refuse an application, the Hearing Officer will not necessarily give detailed reasons for rejecting each of the arguments advanced if those reasons are, in essence, the same as those that have been rejected in previous decisions. Instead, the Hearing Officer will merely refer back to the previous decisions.

The Practice Note also states that "A clear indication of the sort of business method applications that are inherently unpatentable can be gained by looking through some of the many decisions on this issue made by Hearing Officers recently. Applicants should particularly note that circumventing a technical problem through modification of a business method (rather than solving it by technical means) cannot contribute to the technical character of a computer-implemented invention."

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