UK REVIEW OF INVENTIVE STEP; AUDI CTM APPLICATION

Inventive Step consultation document: a response

The IPKat's post on the UK Patent Office's consultation paper on inventive step in patent law has sparked off this response from an anonymous correspondent - a former Patent Office employee - who read the paper on the train while awaiting his longed-for sandwich. He writes:

"It has all the hallmarks of someone needing to be seen to be pro-active so as to get a good appraisal [essential these days with the new salary structure, where a significant proportion of pay is based on "performance"] and is riddled with false assumptions and couched in the sort of language that now seems to be the norm with government department pronouncements. Quality is defined in terms of the process, not the end product. What applicants want is a good patent, not a documented audit trail that the correct processes were followed.

What is "interesting" to me is the bit asking about past experiences with inventive step. When the 1977 Act came in, examiners then in post had been used to dealing only with novelty under the philosophy, enshrined in the statute and judicially approved, that any benefit should be resolved in favour of the applicant. While we were given training on inventive step, the practice in many examining groups (but not any I worked in) was not to bother with inventive step as it got in the way of productivity.

Following a round of offers of early retirement, most of the experienced examiners had left by the end of last month (hence the current shortage of hearing officers), and examining is now carried out by relatively inexperienced staff who give scant reasoning for objections and who give pronouncements on inventive step from the viewpoint of the man skilled in the art. When did one last receive an official letter where objections were framed with reference to provisions of the Act and Rules as expressly required by S.18(3) of the PA1977?

I must look up the RPC referred to in the consultation which prima facie held that the onus on the applicant is to show that the examiner is wrong as regards inventive step. The old "benefit of doubt " philosophy seems to be heading for extinction".

This is scary stuff. While the IPKat is truly and genuinely impressed with the efforts the UK Patent Office is making in all directions, he accepts that any granting authority is only as good as its available staff complement can let it be. In time, inexperienced stafff become experienced staff. But whatever happened to the benefit of the doubt in favour of patent applicants?


Vorsprung durch Übersetzung

On Wednesday the IPKat posted a note on the ruling of the OHIM Second Board of Appeal on the registrability as a Community trade mark of Audi’s slogan “Vorsprung durch Technik”. Patentanwalt Dr Robert Harrison writes:

"The OHIM decision states that the appeal is rejected for goods in all classes except in class 12 (Vehicles). Audi received registration in class 12 because their slogan Vorsprung durch Technik is well-known, as was confirmed by the Office in an earlier case (CTM 621 086). For all other classes (9, 14, 25, 28, 37, 38, 39, 40, 42) the decision of the Examiner to reject the mark was confirmed".

Many thanks, Rob, from a grateful audience of clueless kitties when it comes to foreign languages.