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Patents Act 1977: Examining for Patentability

1. This notice announces an immediate change in the way Patent Office examiners will examine patent applications for patentability. The new approach is very similar to that taken by the European Patent Office, and will not materially affect the scope of what is patentable. The change is subject to any additional guidance that may come from the courts as a result of further judgments or appeals.

Background

2. On 21 July 2005 Peter Prescott QC, sitting as a Deputy Judge of the High Court, handed down judgment in CFPH LLC's Application [2005] EWHC 1589 Pat. This was an appeal against a decision of the comptroller that held the invention was not patentable, and the Deputy Judge examined the principles that ought to be applied in considerable depth. On the same day Pumfrey J handed down judgment in Halliburton Energy Services Inc v Smith International (North Sea) Ltd and others [2005] EWHC 1623 Pat. Whilst this judgment was largely concerned with other issues, it too touched on the question of patentability. The Office is aware that these judgments may be subject to appeal. Nevertheless, having considered them carefully it has decided that it should change its examination practice in this area with immediate effect.

"Technical contribution"

3. On the basis of our understanding of previous case law, examiners have been using the "technical contribution" test to assess whether inventions fall outside the exclusions set out in section 1(2) of the Patents Act 1977. Recognising the importance of the case law of the European Patent Office (EPO), examiners have often also applied the test now used by the EPO, as set out in the EPO Board of Appeal decision in Hitachi T258/03. However, they have done this largely as a cross-check, taking the view that the "technical contribution" test was the proper one under UK law.

4. The CFPH judgment, having taken account of the underlying principles, the emphasis many previous Court of Appeal judgments have placed on having regard to decisions of the Boards of Appeal of the EPO and the comments of the House of Lords in Biogen Inc v Medeva plc [1997] RPC 1 at page 42, concludes that assessing inventions against section 1(2) in isolation by applying the "technical contribution" test is not the right approach. Rather, all the requirements for patentability set out in section 1(1) have to be looked at together. This, the judgment says (paragraph 95), suggests a two step approach which can be summarised as follows:

  1. Identify what is the advance in the art that is said to be new and not obvious (and susceptible of industrial application).

  2. Determine whether it is both new and not obvious (and susceptible of industrial application) under the description of an "invention" in the sense of Article 52 of the European Patent Convention - which section 1(2) of the Act reflects.

5. Whilst Halliburton does not express it in the same way, it too reaches a similar conclusion in paragraph 215, where Pumfrey J says "the contribution the inventor makes must lie in a technical effect, and not merely in excluded subject matter".

6. Accordingly (and unless and until there is any guidance from the courts to the contrary), examiners will in future apply the CFPH approach as set out in paragraph 4 above.

"Form over substance"

7. In Halliburton Pumfrey J went on to consider whether a patent claim whose contribution was merely in excluded subject matter could be rendered patentable by adding an industrial step and concluded it could in that particular case. The Office does not interpret this as meaning that adding on such a step will always or even usually render a claim patentable. Indeed, to interpret it this way would be inconsistent with much UK and European case law which has consistently held that a non-patentable invention cannot be rendered patentable simply by claiming it in a different guise. Such an interpretation would also be inconsistent with the CFPH approach in general and with the specific comments in paragraphs 25 and 103 of that judgment. However, Halliburton does show that there can be circumstances in which the way a claim is expressed can affect its substance, and CFPH makes the same point when it discusses the distinction between what it calls "hard" and "soft" exclusions (e.g. see paragraphs 34 to 36 of that judgment).

Effect of the new approach

8. In the past, the UK approach to patentability has been perceived as somewhat different from the approach adopted elsewhere in Europe. The Office has always felt that the two approaches led to the same answer in nearly every case. Nevertheless, the Office will now be adopting an approach that is very similar to that of the EPO. It is true that Hitachi addresses examination under Article 52 as a separate step (and hence needs to import the concept of "technical contribution" into the obviousness test) whereas CFPH does not, but in practice the two approaches seem very close.

9. It is the Office's view that the change in approach does not change the boundary of what is patentable. There will inevitably be the borderline case which might have fallen one way under the old approach and a different way under the new approach, but for the vast majority of cases the answer is likely to be the same. The Office has reached this conclusion after asking examiners to apply the CFPH tests to a number of case studies.

Details of the new approach

10. In identifying the advance in the art that is said to be new and not obvious, examiners will look at the claim as a whole, including aspects that might fall within the section 1(2) categories. This is consistent with case law and with the comments made in paragraphs 101 to 104 of the CFPH judgment.

11. As indicated in paragraph 96 of the judgment, it will not always be necessary for an examiner to carry out a search before he or she can conclude that the invention fails the second CFPH step. It may often be possible to reach this conclusion on the basis of what is acknowledged in the specification and/or the examiner's specialist knowledge.

12. In applying the CFPH tests, examiners will continue to look at the substance of the invention and not the guise in which it may happen to be presented.

13. An invention will not be patentable if it is new and not obvious merely under the description of things that are excluded by section 1(2). This is clear from paragraphs 100 and 127 of the CFPH judgment and also from the expression "as such" in section 1(2).

14. In the case of computer programs, the approach suggested in paragraph 104 of the CFPH judgment may sometimes be useful. This asks the question: "Would it still be new and not obvious in principle even if the same decisions and commands could somehow be taken and issued by a little man at a control panel, operating under the same rules?". If yes, that suggests the invention is not really about computer programming at all, though one would still need to consider the other exclusions in section 1(2).

15. Whilst they will be guided by the contents of this notice, examiners and hearing officers will, as always, assess each case individually on its merits and take full account of any arguments advanced by the applicant.

Enquiries

16. Any enquiries about this notice should be sent to:

Thomas Marlow
UK Patent Office
Concept House
Cardiff Road
Newport
South Wales
NP10 8QQ

Tel: +44(0)1633 813572
Fax: +44(0)1633 814491
E-mail: thomas.marlow@patent.gov.uk

SN Dennehey
Director of Patents
The Patent Office
29 July 2005

Last updated 23 August, 2005 top