Test for Obviousness - Inventive Step Response

The UK Patent Workplace conducted a consultation on 1 of the tests for patentability - which is whether or not an invention has an 'Inventive Step'. The test is whether or not the invention is apparent to a individual skilled in the art taking into account what prior art was offered at the time when the patent application was filed.

The consultation looked at the wider significance of the 'Inventive Step' and no matter whether there was any need to have for change. It also considered the possibilities of refining the 'Inventive Step' test under UK and European law.

According to the Patent Office, there is considerable international debate concerning the level of invention required to justify the grant of a patent and a widespread view that possibly some patents are getting granted where there is little invention and that this impedes follow-via innovation. The recent Gowers Report touched upon this problem and referred to the consultation, stating that "it is fundamental that the inventive step is set at the correct level". Examination for inventive step (also referred to as "obviousness") has been a feature of UK patent law considering that the introduction of the Patents Act 1977 and the consultation sought comments on the level at which that step must be set, how to apply the law and how that application compares with other Intellectual Property Offices internationally.

The Patent Workplace has published the outcome of its Inventive Step Consultation. In its press release Sean Dennehey, Director of Patents, mentioned:

'...We wanted to go on the front foot in response to the international debate about whether the inventive step hurdle for acquiring a patent was too low and leading to so-called trivial patents. We are pleased that the consultation has confirmed both that there is no will need for any adjust to the simple law as it relates to inventive step, and that our application of the law is appropriate. On the other hand, we recognise that in the face of changing technology we need to maintain our practice under evaluation to make sure we keep pace with the technological environment in which inventions are made.'

There had been 26 responses to the consultation, from representative trade bodies and skilled associations, individuals and firms. For a copy of the Response see:

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© RT COOPERS, 2007. This Briefing Note does not provide a comprehensive or total statement of the law relating to the troubles discussed nor does it constitute legal advice. It is intended only to highlight general issues. Specialist legal suggestions should certainly generally be sought in relation to specific circumstances.