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More research is needed to establish how consistently the test of inventiveness is applied in assessing patent applications from high tech fields.

This is the conclusion of the The UK Patent Office's public consultation on the so-called "inventive step" test in UK patent law. But despite its concerns in this one area, the Patent Office said the consultation showed most people thought the law is tough enough as its stands.

According to Matt Cope, a senior patent examiner at the Patent Office says that the research would most likely start off with an internal literature review - a comparison of past patents. He did not rule out further public consultation, if it is deemed appropriate.

But whatever is done, we won't have long to wait: "Ideally, we'll deal with all the recommendations within 2007," he told us.

The inventive step, or obviousness test, is as follows: would a hypothetical skilled man, who knows everything but does not have the slightest spark of inventive ingenuity, come up with the same idea if he knew all the prior art, but had not read the patent application?

The Patent Office says it is the most difficult part of the patent examination process.

The consultation document was accessed almost 6,000 times and downloaded almost 2,000 times during the consultation period. The Patent Office received only 26 formal responses - seven from the tech sector, and six from trade associations and other collective bodies.

The majority of respondents wanted the office to tread a middle ground, balancing the needs of the patentee and those of third parties. On either extreme, technology firms tended to want tighter processes, while pharmaceutical firms thought the Patent Office was already too rigourous.

One respondent said: "My contention is that, if software is to be patentable at all, the level of inventiveness required should be set very high indeed. Otherwise it will do far more harm than good."

The report acknowledged the level of concern expressed by the tech firms that responded, but argued that the solution did not lie in raising the bar for inventiveness.

It noted: "There were also some suggestions that it is too easy to obtain a patent for software (computer implemented inventions), although it may be that, rather than this being an issue relating specifically to inventive step, it was part of a more general opposition to patents in this field."

Other respondents were more concerned that innovative work would go unprotected, if the law is applied too rigourously. One cautioned: “What may seem trivial may be the culmination of many years’ work and the breakthrough that allows a technology to finally become commercial. Therefore extreme care must be taken not to fail to grant such patents.”

Although the consultation was carried out in the first half of last year, the results have only been published now, the Patent Office says, because staff were busy dealing with the implications of the Gowers Review.

You can read the report here (pdf). ®

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