The Patent and Design Journal No 6027 - Intellectual Property Office

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xvi Patents and Designs Journal No. 6027 24 November 2004 Special Notices - cont (1) Boone -and- (1) ITV Network & Another Plaintiff(s) & Defendant(s) Date of Hearing SRIS code No. (1) Baccini -and- (1) Celador Productions Ltd & others (1) Koninklijke Philips Electronics N.V. -and- (1) Remington Consumer Products Ltd (2) Rayovac Europe Ltd 21st October 2004 C/118/04
24 November 2004 Patents and Designs Journal No. 6027 xvii Special Notices - cont Practice Notice Patent applications relating to methods of doing business We are receiving an increasing number of patent applications relating to methods of doing business that are inherently unpatentable. In the usual course of events, at the examination stage there are several exchanges of correspondence between the examiner and the applicant, as the applicant makes successive attempts to rephrase the claims in the hope of coming up with some that are patentable and/or deal with other, lessimportant issues that have been raised. Only when the end of the rule 34 period 1 is imminent is a hearing appointed, normally at short notice. The Hearing Officer then issues a lengthy decision, going carefully through all the arguments advanced. Often, these arguments are very similar to those that have been advanced in many other cases. We have come to the conclusion that this is not an efficient and sensible use of our resources, nor is it a sensible procedure from the applicant’s perspective as it simply increases costs for no real benefit. Accordingly, we are making two changes to the way we handle business method applications for which the examiner considers there is very little, or no, prospect of grant because the invention is inherently unpatentable: 1. The examiner will invite the applicant to a hearing at an earlier stage in the examination process. Upon receiving the response from the applicant to the first examination report under section 18(3) of the Patents Act 1977, the examiner will re-consider whether the application discloses a patentable invention. If the examiner remains of the opinion that there is no prospect of a patent being granted, the application will be referred to a Hearing Officer immediately for a decision on whether the application should be refused. The applicant will, of course, be given the opportunity for an oral hearing. The examiner will not engage in further exchanges of correspondence about any other matters that might be outstanding. Instead, consideration of these will be deferred pending the Hearing Officer’s decision on the key issue of patentability. 2. In appropriate cases, Hearing Officers will issue abbreviated decisions. If the Hearing Officer decides to refuse an application, the Hearing Officer will not necessarily give detailed reasons for rejecting each of the arguments advanced if those reasons are, in essence, the same as those that have been rejected in previous decisions. Instead, the Hearing Officer will merely refer back to the previous decisions. This is consistent with the judgment of the House of Lords in South Bucks District Council and Another v Porter (No. 2) [2004] UKHL 33 where their Lordships held that provided a tribunal’s reasons are intelligible and adequate in enabling the reader to understand why the matter was decided as it was, they could be briefly stated. A clear indication of the sort of business method applications that are inherently unpatentable can be gained by looking through some of the many decisions on this issue made by Hearing Officers recently. A list of examples of refused applications is attached as an annex to this document. Guidance can also be found in Practice Notice Patents Act 1977: Interpreting section 1(2) [2002] RPC 40.
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The Patent and Design Journal No 6027 - Intellectual Property Office

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