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Thursday, 11 July 2013

No Searches on Excluded Matter- the UKIPO Dig Their Claws In

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.


Searching Kat
With regard to the case at hand, the examiner three times refused during prosecution to search the application which, he claimed, would serve “no useful purpose”, as he had previously concluded that claimed invention was “a scheme, rule or method for…doing business, or a program for a computer”, both of which are excluded from patentability under section 1(2) of the Act. Essentially, the examiner deemed it pointless to undertake a novelty/inventiveness search if the application was fundamentally unallowable anyway.
The applicant on the other hand retorted that the examiner should conduct a search, claiming conversely that if the search leads to refusal of the application for lack of novelty and/or obviousness, it would be pointless to argue over excluded matter. The applicant argued that this approach would be more efficient (i.e. less costly) as all the possible issues would be dealt with simultaneously.
The hearing officer began by outlining that section 17(5)(b) of the Act “serves to protect the public interest that only those applications that…serve such a purpose will be searched and so contribute to the wider economic development within the country”. When an application comes before an examiner he or she must decide whether or not a search would assist with the matter at hand. In this case, the examiner was understandably of the opinion that performing a search would not assist in resolving the excluded matter issues with the application.
In his judgment, the hearing officer cited the judgments of Pumfrey J in Shopalotto ([2005] EWHC2416 (Pat)) and Peter Prescott QC in IGT([2005] EWHC 568 (Pat)) where, in the latter case, Mr Prescott held that “on matters of searching I do not want to say one word that would fetter the discretion of the Patent Office in this and future cases”. In light of these decisions the hearing officer ruled that “the discretion of whether to search an application or not lies with the office” and that the decision rested with the examiner based on the facts of the case. He specifically rebuffed the applicant’s submissions, indicating that it was a matter of “common sense” (a concept taken from Shopalotto) whether an application should be searched or not.
The hearing officer did however confirm, in light of the judgment in CFPH ([2005] EWHC 1589(Pat)) and section 101 of the Act, that there is “an onus on the examiner to make it clear why they have not searched” and confirmed that the applicant does indeed have a right to a hearing where they “will have the opportunity to refute it [the refusal to search] in case there has been a mistake” (the IPKat notes that, in an amusing redefinition of the term “hearing”, the hearing officer simply considered the matter based on the papers already on file as the applicant had waived their right to an actual hearing!).
This decision reminds us that potential patentees will find themselves in a very difficult situation if an examiner has, with any justifiable reason, refused to search an application.  Given the body of case law on the subject, the only solutions for an applicant would be to overcome the excluded subject matter objection or otherwise have a strong argument as to why the examiner’s discretion has been wrongly applied.

12 comments:

Dave said...

What would happen if the applicant was not happy with the result of the hearing? How would an appeal to the courts be handled, in light of the fact that the subject matter of the application is still not in the public domain?


Rahul said...

That is very interesting element in the UK patent act. In India, it is mandatory to perform search once the request for examination has been filed (Section 12 and 13). Subject matter eligibility is the last test of patentability and the examiner's report must contain investigation the examiner made under Section 13 (Which pertains to finding anticipation).

I think the flexibility in adjudging subject matter first is also there in the US. But then US lawmakers draft and enact laws with sections usually having one line or paragraph and leave everything on their courts to decide.

Wondering if there is any parallel to this particular UK law elsewhere in world.

Rahul

Anonymous said...

At least from the point of view of the IPO, I can see why the applicant's reasoning failed. The examiner could either spend half a day doing the search, or spend anouther half hour thinking over the application and going "nope, still a business method". Given that the UKIPO search is already very cheap, the second option seems much more reasonable.

Darren Smyth said...

In reply to Dave - it is not correct that "the subject matter of the application is still not in the public domain". The patent application is published - see here:

http://worldwide.espacenet.com/publicationDetails/biblio?DB=worldwide.espacenet.com&II=0&ND=3&adjacent=true&locale=en_EP&FT=D&date=20091022&CC=WO&NR=2009128847A1&KC=A1

and you can see the file history at the UKIPO here:

http://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB1018115.4

Apologies if this was not clear from the post.

Anonymous said...

Paragraph 39: "I propose to explore what is actually happening in this invention and by doing so I can also determine what is it that the inventor has added to the stock of human knowledge"

I can't see how this can be achieved without conducting a search to determine the state of the art, i.e. the stock of human knowledge, to which the inventor has added the claimed invention. Surely a search is needed for this determination to have been correctly made?

Anonymous said...

Refusal to carry out a search is clearly a very serious matter for the applicant. The UKIPO needs to ensure that Examiner's do not resort to using it simply because they believe the case is going to be a difficult one. In addition refusal to carry out a search should not be used in a punitive way against applicants who are perceived as pushing the boundaries of what is patentable.

dave said...

In reply to Darren:

Thanks for clarifying.

Hypothetically, my point remains - a GB applicant, on receiving notification that the IPO examiner was not going to conduct a search, could withdraw the application before publication, no?

In such circumstances, would they still be able to request an ex partes hearing and subsequent court appeal to hear the case, or would the withdrawal from the search/publication process close that option for them?

Darren Smyth said...

Dave
- Once you withdraw the application, there is no remaining right to any further processing by the patent office, including the search, or indeed a hearing.

Anonymous said...

In any case surely the NSA would have got a copy of your application. May be you could continue prosecution at their headquarters...

MaxDrei said...

To the anonymous at 13:21, I suspect you of lacking a mind willing to understand. The HO explains the caselaw, that you don't need a search to identify from the app as filed what is the field in which the alleged contribution is being made. If the field is an excluded one, then Applicant has a problem with patent-eligibility, irrespective what any PTO search might have brought to light.

In EPO terms, it is the Applicant who fixes the technical field and announces in the app as filed what was the subjective technical problem solved by the invention's contribution to the art. Fair's fair. When you in the EPO formulate the objective technical problem you have to start from something realistic, in the field the Applicant has designated.

Michael Thesen said...

The same problem appears sometimes at the EPO:
The search report says that no reasonable search could be carried out because the subject-matter is excluded and then the examiner re-iterates that no technical problem can be identified (which is no surprise because the formulation of the technical problem requires at least one piece of prior art as a starting point).

The addition of hardware features to the claim is either completely disregarded or triggers the response than everything that is left when removing the non-technical limitations is general purpose computer system considered as part of notorious general knowledge or the statement that the claim is "merely reciting an administrative banking procedure alongside straightforward technical means for its implementation". Does anyone a good strategy for this?

A small comfort might be that the lack of available prior art may turn into an advantage in the appeal procedure. Once technical subject-matter is identified, the BoA will have difficulties to reject hte application due to lack of inventive step if no (or very few) prior art is available. I wonder if this effect may have played a role in the intersting decision T1051/07.

As a final remark: I wonder how the "no search" declaration interferes with Rule 137(5) EPC, which forecloses amendments extending the claims to subject-matter which has not been searched. In principle, this means that the applicant will not be entitled to amend the claims at all if no search has been carried out.

Anonymous said...

Does anyone a good strategy for this?

Identify a concrete technical problem that the application solves compared to, say, the notorious network of general purpose computers, and explain what claim features solve this problem.

Of course there needs to be such a technical problem before you can expect to succeed.

A small comfort might be that the lack of available prior art may turn into an advantage in the appeal procedure. Once technical subject-matter is identified, the BoA will have difficulties to reject hte application due to lack of inventive step if no (or very few) prior art is available.

If no search was done, the BoA will remit the case to the ED. The same will normally apply if it appears the search did not cover the features that the BoA considers technical.

I wonder if this effect may have played a role in the intersting decision T1051/07.

What played a role in T 1051/07 is that the Board deciding that case takes a quite different approach than the Boards usually dealing with computer-implemented inventions. In T 1051/07, if you look through all the words making up the distinguishing features, what is left are "means to perform non-technical functionality".

As a final remark: I wonder how the "no search" declaration interferes with Rule 137(5) EPC, which forecloses amendments extending the claims to subject-matter which has not been searched. In principle, this means that the applicant will not be entitled to amend the claims at all if no search has been carried out.

I have not yet seen a decision on whether R. 137(5), second sentence, is compatible with Art. 123(1).

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