INVENTIVE STEP - TIME FOR A CHANGE? LATEST JCLE

Inventive step - the Patent Office asks for comments

The UK Patent Office has today launched a consultation paper, Consultation on the inventive step requirement in United Kingdom patent law and practice, to ask for comments as to whether the inventive step requirement for patentable inventions is right for inventors, the public at large and the UK economy. The exercise wants to know:

* are too many "trivial patents" being granted?

* are innovation and competitiveness best served by easy patenting with low hurdles?

The IPKat is appalled at the expense and effort that goes into determining inventive step in disputed cases. He's not very impressed with the notion of having to conjure up the existence of a hypothetical basically uninventive person skilled in the prior art in order to guess what that hypothetical person would (or would not) have been able to do without inventing, when faced with a prior art which might be quite elderly by the time the issue is argued before a court. There's a lot to be said for sticking to a novelty test alone and scuppering the inventive test criterion. While it will result in trivial patents being granted, the existing system is quite capable of doing that too - and at least the system will be simpler and more predictable.

Merpel wonders why this initiative has come at this time from the UK Patent Office. It's unlikely that the UK government would consider fiddling around with an internationally accepted norm for patentability if no other jurisdictions had the same intention.

Closing date for answers: 31 May 2006.
Full consultation and feedback form here.

Journal of Competition Law and Economics

The December 2005 issue of the Oxford University Press quarterly Journal of Competition Law and Economics has now been published. It contains two features of particular interest to the intellectual property fraternity. The first, by Andrew Wise and Kiran Duwadi (both of the FCC) focuses on competition between cable television and direct broadcast satellite, examining the impact of the cost of switching services upon the attraction of each service. The second, by Matthew Burgess (CRA International) and Lewis Evans (Victoria University of New Zealand) considers the effect of parallel importation of CDs on the launch dates of cinema films in New Zealand.

Full contents of current issue here