Inventive step is considered to be the most difficult patentability criteria to apply when it comes to assessment of patent applications. This is because the patent examiner has to don the role of a hypothetical skilled man in the art and, without any inventive ingenuity, decide whether or not the step taken from the prior art to the invention claimed constitutes an inventive step. Too lax or too strict application of the 'inventive step' criteria can act as a barrier to further innovation and generally leads to the criticism of the Patent Office.
Keeping in mind these considerations, the UK Patent Office launched a formal consultation on the inventive step requirement in United Kingdom patent law and practice in February last year. The main issue to be ascertained was whether improvements could be made in this important area. After thoroughly reviewing the responses it had received, the UK Patent Office has just released its consultation report. The report points out that as of now, there is no need to amend or bring any changes in the basic law relating to inventive step. However, it highlights the need to ensure consistency in the patent office practice in applying the inventive step criteria in high technology fields. Another key recommendation relates to the third party observations on patentability under s. 21 of the Patents Act 1977. According to the Patent Office, this provision allows the general public to submit arguments and evidence on the patentability of an invention. The report hopes that if this provision is used constructively, the evidence supplied could benefit the Patent Office by greatly enhancing the identification of prior art, and thereby improving the quality of granted patents. The report concludes by noting that the Patent Office will endeavour to work towards the professional development of its examining staff and will keep its general technological knowledge up to date.
The last two recommendations are in tune with the Gower's report which came out last year and focussed on the broader review of the intellectual property framework.