UK(I)PO nails down patentability; CIPA journal

Following last year's Court of Appeal decision of Aerotel/Macrossan (see the IPKat's commentary here), the UK Patent Office, soon apparently to be renamed the UK Intellectual Property Office, has revised its Manual of Patent Practice.

The Office's views on the Aerotel/Macrossan decision, as well as the lesser Patent Office decisions of John Lahiri Khan’s Appn (BL O/356/06) and Rockwell FirstPoint Contact’s Appn (BL O/355/06) have now found their way into the Manual relating to section 1 of the Patents Act.

For those uninitiated, the Manual is the 'bible' for patent examiners, and tells them how to deal with (pretty much) anything that might come their way. Although not legally binding, it is nonetheless important in that it establishes how patent applications are generally dealt with, and will be the first place an examiner looks when he or she want to back up their arguments.

The revised Manual now gives a strong indication of the new approach to be taken regarding excluded inventions under Section 1(2). The now well-known four step test approved in Aerotel/Macrossan is given particular prominence. The Patent Office consider that the fourth step (to check whether the actual or alleged contribution is actually technical in nature) is "to be used only when an application has passed the three previous steps" (see point 1.10.1). This has been confirmed by the Office in recent decisions such as Khan's Appn.

As has been mentioned in previous IPKat commentary here, it seems unlikely that the fourth step will ever be used in practice. For practitioners in particular, it does not therefore seem to be of much use as a "get out of jail" card for patent applications that would otherwise be within one or more of the excluded areas.

On another note, the CIPA Journal for January 2007 has now arrived. A particular point to note is a piece by David Barford (Deputy Director of the UK Patent Office) on the Office's Opinions service under section 74A. He reckons that the service has done quite well, all considering, and 34 requests so far is not bad going. He also gives some useful pointers on how to go about requesting an opinion.

Another point to note is that summaries of recent Patent Office decisions and opinions have this month been provided by the present author. Any praise or complaints regarding quantity or quality may be addressed to him via the comments facility below. Merpel says: "Don't let it get to your head. You're not a Fellow yet, merely an Associate, no matter what some people might think".