Search the Archives           Subscribe           About this News Service           Reader Comments


Archived updates for Tuesday, February 06, 2007

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.

    (10)comment(s)     translate     More Updates     Send    

10 Comments:

Anonymous Anonymous said...

I'm a US examiner. If I wrote some of the types of rejections that come out of the EPO or UK, I'd be fired.

They'll say for example claim 1 is anticipated and claims 2-7 "lack inventive step" and don't even have to give a reason!

February 06, 2007 8:57 PM  
Anonymous Anonymous said...

The above comment reveals nicely the gulf between the two worlds, and that the Germans are not wrong to speak of an association between the thoughts "USA" and "Hire and Fire". Because patent claims in Europe are more vulnerable to effective attacks on their validity in inter Partes proceedings after grant than they are to ex Parte objections before issue, patent attorneys from Europe treat with respect what EPO Exrs write about the claims. EPO Examiners function in this environment, and do give reasons, despite what your correspondent writes above, but they are sometimes a little cryptic because they are written to an addressee (the attorney) who is a fellow specialist professional, and in the expectation that the reader will be grateful to have it pointed out where the claim is vulnerable to attack (so he/she can reflect on what amendment would toughen the claim up, before issue into the rough, tough post-issue world of oppositions, nullity suits and revocation actions. Besides, in civil law Europe, the examiner of patentability/validity is credited with being him/herself a person with detailed specialist technical knowledge in the field of the invention.

February 07, 2007 1:36 AM  
Anonymous Anonymous said...

puma mens shoes
puma shoes
puma speed
nike shoes
nike air
nike air shoes
nike air max 90
nike air max 95
nike air max tn
nike air rift
nike shox r4
nike air max 360
nike shox nz
puma cat
air max trainers
mens nike air max
sports shoes
nike air rifts
nike air rift trainer
nike air
nike shoes air max
nike shoes shox
air shoes
Lucyliu IS Lucyliu
nike shoe cart
puma future
cheap puma
nike rift
jeans shop
diesel jeans
levis jeans
nike rift shoes
cheap nike air rifts
bape shoes

January 07, 2010 12:08 AM  
Blogger Unknown said...

fitflops outlet sale
oakley sunglasses wholesale
ray ban sunglasses
oakley,occhiali oakley,oakley italia,oakley occhiali,oakley sunglasses
cheap nba jerseys
burberry outlet sale
mulberry outlet
burberry outlet online
toms outlet store
coach outlet
louis vuitton bags
uggs outlet
ferragamo outlet
phone cases
new balance shoes
rolex watches,rolex,watches for men,watches for women,omega watches,replica watches,rolex watches for sale,rolex replica,rolex watch,cartier watches,rolex submariner,fake rolex,rolex replica watches,replica rolex
ray ban sunglasses
coach handbags outlet
louis vuitton handbags outlet
adidas wings shoes

January 04, 2016 9:44 PM  
Blogger Unknown said...

WWW0601
polo ralph lauren
hermes birkin
true religion outlet
saucony shoes
nike factory outlet
ray ban sunglasses
polo outlet
fred perry polo shirts
prada sunglasses
chicago blackhawks jerseys

May 31, 2018 10:55 PM  
Blogger Unknown said...

www0712

nike pegasus
nike shoes
michael kors outlet
dansko shoes
coach outlet online
longchamp solde
ugg boots
adidas outlet
cavaliers jerseys
cheap jordans






July 12, 2018 5:40 AM  
Blogger Unknown said...

adidas superstar
coach outlet online
canada goose outlet
michael kors outlet online
uggs outlet
moncler online
manolo blahnik
coach outlet
canada goose jackets
cheap jordans

August 09, 2018 4:31 AM  
Blogger Unknown said...

adidas superstar
coach outlet online
canada goose outlet
michael kors outlet online
uggs outlet
moncler online
manolo blahnik
coach outlet
canada goose jackets
cheap jordans

August 09, 2018 4:32 AM  
Blogger miki said...

0814jejeLes dessins nike air jordan 11 retro low noir sont à la mode et ont une forte adhésion parmi les hommes nike air max 1 femme bleu et les femmes. Les objectifs de l'entretien des chaussures de asics basket de ville basket-ball un seul sera le maintien de la fonction, calzado nike dynamo free td infantil l'autre est certainement le maintien de l'apparence. La air jordan 5 oreo ebay colle Loctite GO2 est définie comme une colle tout usage asics gel lyte v diamond qui pourrait permettre à deux systèmes de développer durabilité et flexibilité.

August 14, 2018 1:42 AM  
Blogger Unknown said...

www0903
jordan 8
nike factory outlet
christian louboutin shoes
cheap basketball shoes
adidas shoes
adidas nmd
golden goose sneakers
louboutin shoes
ugg boots
jordan shoes


September 02, 2018 10:58 PM  

Post a Comment

<< Home