UKPO's response to the inventive step consultation

The UK Patent Office has published its response to last year’s consultation on the inventive step requirement under patent law. It concludes:

*the basic law on inventive step is fine and dandy and shouldn’t be changed. How it is applied in practice is generally OK too;

*there are however some concerns about how it is applied in high technology situations;

*patent examiners’ training will emphasise the need to keep up to date with technology and to refine search skills;

*the Patent Office will encourage people to use s.21 – which allows third party observations on (inter alia) inventive step. Though the provision is already in place, it seems many people don’t know of its existence,

The IPKat reckons this sound like a sensible approach to take into account both sides of the debate. He shares the Patent Office’s disappointment though that, despite the importance of the issue, the consultation only elicited 26 responses.
UKPO's response to the inventive step consultation UKPO's response to the inventive step consultation Reviewed by Anonymous on Thursday, February 08, 2007 Rating: 5


  1. Virtually everyone I've spoken to thinks s.21 observations are a waste of time. They enable a patent applicant, by responding to them, to tidy up his patent before grant and make it less vulnerable to attack. If you keep your powder dry and don't make observations before grant, you've got a much better chance of either revoking the patent or squeezing a pretty decent licence out of the patent owner in return for keeping quiet.

    As for only 26 responses, doesn't that reflect the facts that (i) most people like things the way they are and (ii) the UK isn't going to do anything too startling unilaterally anyway.

  2. Regarding Jeremy's comment on S.21 obv.; why is that a bad thing. Seems to me, it is quite a desirable thing in light of what you have mentioned. Surely you are not in favour of slightly less valid patents being granted... or blackmail for that matter!?!?



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