Patent 'fundamentals' questioned

In laying the fundamentals of patents open to question, the Patent Office consultation is likely to educate as well as disarm any opponents of the British system - unless their arguments carry weight, of course. Even software patents and business methods, both currently unrecognised in European law, are up for consideration.

At its core it will ask whether inventive step, the key justification for a patent award, is doing its job properly. The Patent Office is asking if inventive step - how far the next innovation has to move on from the last for it to be recognised and rewarded - is even an appropriate measure.

Edwardes says the debate is likely to settle on what is the appropriate balance between, on the one hand, a system so easy it awards trivial patents of the sort for which the US has become infamous, or on the other, having rules so tight they fail to reward genuine innovation.

Robert Jackson, a partner at patent attorneys Frank B Dehn & Co, thinks examples like the British High Court's decision last week over a patent held by InPro, a firm that specialises in the exploitation of intellectual property, will require some reckoning.

The Patent Office is known to give inventors the benefit of the doubt, he says, and then leave it to the court to check its decisions, if challenged.

It may be suggested, for example, that a lenient system makes it likely that a hopeful innovator gets a flight of fancy rubber-stamped only to end up being the cause of wasted time and money defending it in the courts.

Even worse, it might be an opportunity for IP cowboys to intimidate small innovators or hitch a ride on the coat tails of successful firms. More resources brought to bear on patent decisions might solve the problem.

Yet, rather than illustrate a fault in the system, the InPro verdict may serve to buttress the status quo. The court ruled against an assertion that RIM, the makers of the Blackberry telephone/computer hybrid, had infringed its patent.

If careless, lazy, or deceitful innovators find they can get their inventions past the trusting Patent Office but are always humbled by the courts, few of them will bother to chance their luck.

Now the office's opinions service is helping small patent holders tell when they are being faced down by a patent fake, the system is looking even stronger.

But what might the Patent Office have said had it been asked its opinion on the patent it had already awarded to InPro? ®