Original URL: http://www.theregister.co.uk/2006/02/07/uk_patent_review/

Patent 'fundamentals' questioned

UK invites world review

By Mark Ballard

Posted in Developer, 7th February 2006 07:03 GMT

The UK Patent Office has called for worldwide consultation on the fundamental principles of patenting to tackle growing doubt in the efficacy of the IP approval system.

The British patent system is thought to work rather well in comparison to the US system, which has a reputation for awarding trivial or ridiculous patents, and the European system, which is trying to rebuild its reputation after an exhausting three-year squabble over software patents.

The UK office has been under pressure to either give in to the lobbies behind these trends or to protect its system from being diluted by strengthening its principles.

It appears that the latter is the motivation both for this consultation and the wider Gowers review of Intellectual Property that was launched in December.

At least in official circles, there is no lack of pride in the purity of the British system. Both reviews were tempered at their launch by official claims that there is nothing wrong, but that is no reason to neglect checking the knots and greasing the wheels, even if British patent law is set for the most part at the EC.

Reviews of the British system now will not only protect it against powerful lobbies that would have it operate differently, but would strengthen its reputation, and therefore encourage innovators at a time when patent is a dirty word. It would also strengthen the British position in any move toward a worldwide system or in negotiations in Europe.

Patents Directorate deputy director Hugh Edwardes, who launched the review, says the reputation of the US system and the controversy over software patents prompted this "fundamental" review.

"People say they're not worth the paper they're written on, like the famous Amazon one-click buy. People think it brings the patent system into disrepute if you grant patents like that," he says.

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? ®