UKIPO’s New Approach to Search and Examination
The UKIPO has recently issued their long-awaited statutory guidance following the UK Supreme Court’s judgement in Emotional Perception. Our previous reporting on this case can be found here. The statutory guidance sets out how search and examination of patent applications should be undertaken – in particular when the patent application relates to a computer-implemented invention. Though this guidance will equally apply to any patent application that is considered a ‘mixed-type invention’.
The practice note is set out in two parts: Part 1 summarises the judgement and Part 2 discusses applying the judgement to practice.
The UK Patents Act 1977 sets out statutory exemptions to patentability in S1(2), which defines a non-exhaustive list of what is not considered an invention, as such. This was historically tested using the test set out by the Court of Appeal in Aerotel. Part 1 of the guidance confirms that this test should no longer be followed. Instead, the Supreme Court has decided to align the UK’s approach more closely with the EPO’s test set out by the Enlarged Board in G 1/19, namely the ‘any hardware’ test. The consequence of this is that any claim will be considered to have technical character (and therefore overcome any S1(2) objections) if it includes any technical means, such as a computer, processor, server, or other hardware. In practice, this means that a ‘computer-implemented method’ will automatically overcome this hurdle.
The remainder of Part 1 and Part 2 set out the UKIPO’s new approach to assessing novelty and inventive step. The Supreme Court set out a three-step test to deciding exemption from patentability, novelty, and inventive step in their judgement. The test is formed by a first hurdle, an intermediate step, and a second hurdle.
First Hurdle
The first hurdle encapsulates the ‘any hardware’ test and largely mirrors the Duns principles A to D. This step asks, when viewed as a whole, does the invention have any sort of technical character? It is acknowledged by the Supreme Court that this is a ‘low hurdle’ and has even previously been described by the Comptroller General as ‘mere window dressing’. However, ‘any hardware’ is a clear test to determine if an application passes the eligibility requirements set out in S1(2) and is consistent with the analysis set out by the Enlarged Board in G 1/19.
Whilst not explicitly stated anywhere, it would appear that the ‘AT&T Signposts’ previously used as indicators of technical character under S1(2) are also a thing of the past.
Intermediate Step
The intermediate step is based on Duns principle F and acts as a feature sieve for the second hurdle. This step does a feature-by-feature analysis of the whole claim. For each feature, it should be identified whether that feature contributes to, or interacts with, the technical subject matter of a claim for the technical solution to a technical problem. Readers familiar with the EPO’s approach might find this wording familiar and indeed the guidance suggests examiners refer to the EPO Guidelines when considering whether a claimed feature contributes to the technical character.
The guidance states that the purpose of the intermediate step is to exclude claimed features which do not contribute to the technical character of the claim. Only features which contribute to the technical character of the claim can then be used to assess whether the claim involves an inventive step in relation to the prior art.
Second Hurdle
The second hurdle asks whether the claim is novel and inventive. The guidance confirms that the test for novelty remains unchanged – i.e., is there a single prior disclosure that discloses, either explicitly or implicitly, all the features of a claim.
Turning to inventive step, the guidance is very clear that only features which contribute to the technical character can contribute to an inventive step. The guidance further sets out that examiners should continue to assess inventive step using the approach set out in Pozzoli. However the guidance does not set out in detail how to apply Pozzoli.
It appears applicants can continue to frame the inventive concept broadly based on the claim as a whole. Pozzoli then looks at the difference between the inventive concept and the prior art and assesses whether that difference is obvious.
The second hurdle further adds a requirement that the difference between the inventive concept and the prior art must contribute to the technical character before asking whether that difference is obvious.
It is hoped that once the Manual of Patent Practice is updated and examiners start to use this test in practice, the industry will have more guidance on how to properly assess inventive step in light of this new test.
This approach differs from the EPO problem-solution approach in that there is no requirement to identify the closest prior art, and then determine inventive step based on the features that distinguish the claim from the closest prior art. The determination of inventive step under Pozzoli is less structured than the problem-solution approach.
Searching
Gone are the days that the UKIPO would refuse to search an application because it did not pass the Aerotel test. With the new ‘any hardware’ test, applicants can be certain of obtaining a search (for example, by reciting ‘computer implemented’). This makes the UK an even more attractive place to file a patent application in order to secure an early cost effective search report within the deadline for claiming priority. Such an initial search report can be invaluable in making a decision on whether to continue their application in the UK and internationally.
At Barker Brettell we keep up to date with the constantly evolving landscape that is patent law and are always looking at the best way to help our clients best protect their intellectual property.
If you would like to discuss this matter further, please do not hesitate to contact the authors, Francesco Di Lallo or David Combes, or your usual Barker Brettell patent attorney.
