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.
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?
ReplyDeleteThat 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).
ReplyDeleteI 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
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.
ReplyDeleteIn 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:
ReplyDeletehttp://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.
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"
ReplyDeleteI 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?
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.
ReplyDeleteIn reply to Darren:
ReplyDeleteThanks 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?
Dave
ReplyDelete- 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.
In any case surely the NSA would have got a copy of your application. May be you could continue prosecution at their headquarters...
ReplyDeleteTo 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.
ReplyDeleteIn 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.
The same problem appears sometimes at the EPO:
ReplyDeleteThe 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.
Does anyone a good strategy for this?
ReplyDeleteIdentify 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).