The UK Manual of Patent Practice recites sections of the UK Patents Act 1977 and sections of the Copyright, Designs and Patents Act 1988 relating to patents. It also typically provides citations to important cases and commentary regarding sections in the Act as impacted by new case law (including European Patent decisions) and changes in legislation. It is an invaluable tool for anyone needing access to the nuts and bolts of patent procedure before the United Kingdom Intellectual Property Office (UK-IPO).

The latest edition was published on 1 October 2008. It provides useful insight into the way patent examiners will be viewing certain types of patent claims, amendments and patent subject matters, following a number of developments in the law since the Manual was last revised in February 2008. In particular, the Manual has been updated to include commentary and advice to patent examiners and patentees alike on cases such as Eli Lilly & Co v Human Genome Sciences [2008] EWHC 1903 (Pat) regarding what is “industrial applicability” and the important decision regarding inventive step by Lord Hoffman in Conor Medsystems Inc v Angiotech Pharmaceutical.

The Manual also provides new guidance on divisional applications, on the unintentional failure to pay renewal fees and the discretion of examiners to allow late responses by patentees. It also includes a section on Supplementary Protection Certificates for Medicinal Products and Plant Protection Products.

COMMENT

Whereas statements made in the Patent Manual are not in themselves citeable authority in any patent action by the UKIPO and the Manual is not to be used as a set of legal requirements, it does shed light on the thought processes employed by examiners reviewing patent applications.