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To grant or not to grant

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GSE member Steve Driver from the IPO describes how science, engineering and technology meet law in the world of patents.

If you make an innovative invention, a patent provides legal protection for your intellectual property (IP), enabling you to profit from it.The Intellectual Property Office (IPO) is the official UK government body responsible for IP rights: patents, designs, trademarks and copyright.

From academia to patent examining

I joined IPO in 2015 as an associate patent examiner, after a PhD and nearly 20 years’ postdoctoral research at Warwick and Cambridge. My background is in physics and materials science, researching surface science. After two months initial training, my time has been spent working in a group specialising in measurement.

So what do I do all day?

In a nutshell, I search and examine patent applications, within the legal framework of the Patents Act 1977. To be granted a patent, your invention must be novel and inventive.

The first step is therefore to search for ‘prior art’: any previous public disclosure of the same inventive concept. That means extensive searching in online patent databases, and perhaps also academic journal articles, books, YouTube… in principle, anywhere! I then write a report to notify the applicants of what I’ve found and the application is later made public.

Intellectual Property
Patent law isn't child's play. Creative Commons licence: Traci Lawson

To grant or not to grant?

The next step is “substantive examination”: assessing the application to decide if it complies with the requirements of the Patents Act. This means comparing the invention with the prior art documents. If it's the same, then the concept isn't novel. If any differences are so minor that a legal entity known as the "person skilled in the art" would think that they are obvious and not inventive then the patent can not be granted. Only rarely is all in order at the first examination, allowing me to grant the patent.

Usually there are problems, such as that the main claims aren’t novel and inventive, or aren’t clear. I then inform the applicants. They will usually reply with amendments, often accompanied by extensive counter-arguments, which I re-examine.

When is an invention not an invention?

Sometimes a patent may not be granted even when the concept is novel and inventive. In a recent case, the invention was in essence a computer program that implemented a business method. However, the Patents Act excludes both computer programs and business methods from patentability and therefore I objected on the grounds of ‘excluded subject matter’. The applicant’s attorneys have disagreed and I have now offered them a hearing where an IPO Deputy Director will resolve the case. These are just some of the major requirements a patent must meet.

There’s more to life…

I am also a GSE Champion. As a qualified, experienced scientist in the Civil Service, I believe it’s important to stand up and be counted and to raise the profile of scientists and engineers across government. You can become a GSE champion by emailing:

Training opportunity for GSE members

I am currently helping to organise an ‘IP for GSE’ training day to be held on 8th February at the IPO, which is open to all GSE members. I hope to meet some of you there!

You can read more about the work of IPO on their blog.

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