The Court of Appeal has recently handed down a ruling which will change the way patent examiners assess whether an invention is patentable. The judgment, which unexpectedly did not reflect current European patent practice, is of great importance to inventors.
The Court proposed a four-stage test to determine if something is patentable or not.
The first stage is to ensure the claim is properly construed. This involves working out the extent of the ‘monopoly’ – i.e. the exclusivity granted by a patent.
The second stage is to identify the actual contribution – in other words to assess what the inventor has added in terms of knowledge.
The third stage involves making sure that the subject of the patent is not ‘excluded matter’ – i.e. matter which cannot be patented.
Lastly, it must be considered whether the contribution is technical in nature.
Applications that pass all four tests will be patentable.
One interesting point is that the Court has confirmed that the existence of patentable matter in an invention is a matter of law, so there is no question that a prospective patentee would be entitled to the benefit of the doubt with regard to an application.