Brits Feel Inventive Step Tougher than US Obviousness

On February 5, 2006, the U.K. Patent Office published the final report on the its "Public consultation on level of the inventive step required for obtaining patents:"

The overall message of the responses is that respondents are happy with current law and practice. Where there are difficulties, these are mostly confined to specific situations rather than ‘across the board’ failings. For example the ‘obvious to try’ formulation used recently by the UK courts when refusing some biotechnology patents caused concern to some respondents involved in that sector. There were also some suggestions that it is too easy to obtain a patent for software (computer implemented inventions), although it may be that, rather than this being an issue relating specifically to inventive step, it was part of a more general opposition to patents in this field. . . .

The Office is seen as slightly more generous in what it will allow than are the courts. To some extent this will be due to the greater wealth of evidence that is usually available in adversarial litigation, possibly including testimony of expert witnesses. Moreover, at the application stage, the Office gives the benefit of reasonable doubt to applicants where debatable questions of fact arise. This approach does not appear to give rise to problems in most areas and most respondents were satisfied with the approach. Generally, examiners are seen as responsive to arguments from the applicant to an appropriate degree.

The consultation document offered suggestions for potential amendments to the patent rules, but most respondents showed little enthusiasm for changing the law of inventive step. The opinion from all of the collective groups of patent professionals
who responded to the consultation was that change to statute or rules was neither necessary nor likely to be helpful. Respondents also showed little enthusiasm for changing the way in which inventive step is analysed in practice.

What users do however expect from the Office is a rigorous application of the existing law and legal precedents provided by the courts. In particular, where documents are combined to justify an objection to obviousness, an explanation should
usually be given as to why it is considered that the skilled man
would make such a combination. . . .

There is no evidence of any serious disparity between the UK Patent Office and the European Patent Office (EPO) when dealing with inventive step. It appears that, bar some minor variations, the UK and EPO are seen to be broadly equivalent in the ‘level’ of inventive step applied. This is reassuring given that both offices examine patents under (essentially) the same law. On the other hand, the United States Patent and Trademark Office (USPTO), which operates under a different legal framework, was felt by many to require a lower level of inventive step. Interestingly the Scandinavian countries (which operate within the European system) were felt to be somewhat stricter than the either UK or the EPO.