This Kat has managed to tear himself away from the glorious
July sunshine and get his whiskers into some recent UKIPO judgments. One
decision in particular served to remind this moggy that, as a non-feline
entity, a patent application has but one life which can be extremely
unproductive when an examiner refuses to perform a search.
In the judgment (BL O/260/13), the hearing officer upheld an examiner’s decision to exercise his discretion in deciding not to conduct a search. This confirms that the options are severely limited for applicants wishing to argue that an application should be searched after the examiner has refused to do so. The hearing considered the interpretation of section 17(5)(b) of the Patents Act 1977 (“the Act”), in which the examiner is required to “determine whether or not the search would serve any useful purpose on the application” and to “report accordingly to the comptroller” if no such purpose (purr-pose?) would be served.