Intellectual Property: The search for the middle way

“Trivial patents clog up the market, but if you go too far the other way and set the standard too high, worthwhile inventions won’t pass the test of patentability,” Hugh Edwards, Deputy Director of Legal Affairs at the UK Patent Office told Science|Business.

“We are trying to get some feel from innovators to ensure our examiners follow the middle way.”

Edwards said he is not aware of any criticism of the UK Patent Office – but granting of trivial patents has become an issue in the US and elsewhere. “One of our aims is to put the inventive step requirement in the UK system in the context of how it is used in other countries.”

The inventive step was introduced in the Patents Act 1977 and has not been reviewed since. The Patent Office wants users’ opinions on whether the UK match the objectives of the legislation, the impact of the patents system on the economy, the effect on third parties, consistency and harmonization with other countries and patent quality.

Edwards said that every response will be treated on its merits. “I think we can be assured of response from patent attorneys and patent lawyers. But we’d really like to get feedback from applicants and from smaller companies.”

While the Patent Office has not ruled out changes in the rules, it would be difficult to alter the primary legislation, and not just because the government would have to find the time to do it: new legislation would also need to harmonise UK standards with the EU and elsewhere.

The UK government is currently sponsoring a study of the overall role of the intellectual property system in driving innovation in the UK, chaired by former Financial Times editor Andrew Gowers. Edwards said it was likely that the Patent Office consultation on the inventive step would be of relevance to the study.

New guidance

Patent disputes are often David versus Goliath affairs in which large corporations have the time and money to hold out against their smaller brethren. But that could change in the UK, where the Patent Office has issued the first guidance under its new patent validity and infringement opinions service.

The service certainly looks a lot of cheaper and faster than resorting to law. The four opinions given to date were issued 12 weeks from request at a cost of £200 each.

“Obviously opinions are only as good as the material we receive, but in the case of the first one given, which showed a patent lacked novelty, this was quite a result for the requester [of the opinion]”, said David Barford, Deputy Director of the UK Patent Office.

“The service may not be perfect, and it is non-binding, but it is quick and authoritative. For a small business it is probably better to get 80 per cent of the answer in three months for £200 than 100 per cent at great cost in five years.”

 “Having a positive opinion from us could give a smaller company the backing they need to make an approach for royalties or licence fees,” said Barford.

Opinions can be sought on any UK patent, or European patent that designates the UK. The service is designed so that both sides of the argument can have their say. Requests for opinions are published on the Patent Office web site, with four weeks allowed for any comments. Holders of disputed patents are contacted directly. Both the patent holder and the party requesting an opinion have chance to respond to third party comments.

The Austrian and Japanese patent offices run similar services, but they do not allow both sides to contribute.  

A total of six opinions have been requested since the service was launched in the autumn, with requests coming from patent holders and third parties. There has been significant interest from third parties requesting copies of papers and submitting observations.

“It’s been interesting to see the range of stuff we’ve had in, and there’s also a lot of interest from people in seeing how it works,” said Barford.

Details of the decisions can be viewed at www.patent.gov.uk/patent/opinions/withdrawn