Does 'inventive step' work, asks Patent Office?

The UK’s patentability criteria are set out in the Patents Act 1977, which implements the European Patent Convention. In general terms, it requires that patents should only be granted to inventors who show that:

• their invention is new – i.e. it does not form part of the ‘state of the art’;
• that it is capable of industrial application – i.e. capable of being made or used in some kind of industry; and
• that it involves an inventive step – i.e. that it is not an obvious development, when considered by a person skilled in that area, of earlier works.

The Patent Office is concerned that this last requirement does not strike the right balance, in the wake of worldwide criticism of trivial patents.

"An inventive step requirement which is too difficult for applicants to achieve could result in inventions that might deserve a patent not receiving protection, thus hindering the applicant in research and investment,” said Patent Office Chief Executive Ron Marchant, launching the consultation.

“Alternatively, the danger of an inventive step which is too easy to meet is that patents could be obtained for small changes or improvements which hamper the legitimate activities of third parties,” he said.

The consultation therefore seeks comments on whether the existing system meets the objective of the Patents Act, the impact on the role of the patents system in the economy, its effect on third parties, consistency and harmonisation with other countries, patent quality and whether any aspect of the inventive step requirement should be modified.

Comments are sought by 31st May.