No Searches on Excluded Matter- the UKIPO Dig Their Claws In

This Kat has managed to tear himself away from the glorious July sunshine and get his whiskers into some recent UKIPO judgments. One decision in particular served to remind this moggy that, as a non-feline entity, a patent application has but one life which can be extremely unproductive when an examiner refuses to perform a search.

In the judgment (BL O/260/13), the hearing officer upheld an examiner’s decision to exercise his discretion in deciding not to conduct a search. This confirms that the options are severely limited for applicants wishing to argue that an application should be searched after the examiner has refused to do so. The hearing considered the interpretation of section 17(5)(b) of the Patents Act 1977 (“the Act”), in which the examiner is required to “determine whether or not the search would serve any useful purpose on the application” and to “report accordingly to the comptroller” if no such purpose (purr-pose?) would be served.



Searching Kat

With regard to the case at hand, the examiner three times refused during prosecution to search the application which, he claimed, would serve “no useful purpose”, as he had previously concluded that claimed invention was “a scheme, rule or method for…doing business, or a program for a computer”, both of which are excluded from patentability under section 1(2) of the Act. Essentially, the examiner deemed it pointless to undertake a novelty/inventiveness search if the application was fundamentally unallowable anyway.

The applicant on the other hand retorted that the examiner should conduct a search, claiming conversely that if the search leads to refusal of the application for lack of novelty and/or obviousness, it would be pointless to argue over excluded matter. The applicant argued that this approach would be more efficient (i.e. less costly) as all the possible issues would be dealt with simultaneously.

The hearing officer began by outlining that section 17(5)(b) of the Act “serves to protect the public interest that only those applications that…serve such a purpose will be searched and so contribute to the wider economic development within the country”. When an application comes before an examiner he or she must decide whether or not a search would assist with the matter at hand. In this case, the examiner was understandably of the opinion that performing a search would not assist in resolving the excluded matter issues with the application.

In his judgment, the hearing officer cited the judgments of Pumfrey J in Shopalotto ([2005] EWHC2416 (Pat)) and Peter Prescott QC in IGT([2005] EWHC 568 (Pat)) where, in the latter case, Mr Prescott held that “on matters of searching I do not want to say one word that would fetter the discretion of the Patent Office in this and future cases”. In light of these decisions the hearing officer ruled that “the discretion of whether to search an application or not lies with the office” and that the decision rested with the examiner based on the facts of the case. He specifically rebuffed the applicant’s submissions, indicating that it was a matter of “common sense” (a concept taken from Shopalotto) whether an application should be searched or not.

The hearing officer did however confirm, in light of the judgment in CFPH ([2005] EWHC 1589(Pat)) and section 101 of the Act, that there is “an onus on the examiner to make it clear why they have not searched” and confirmed that the applicant does indeed have a right to a hearing where they “will have the opportunity to refute it [the refusal to search] in case there has been a mistake” (the IPKat notes that, in an amusing redefinition of the term “hearing”, the hearing officer simply considered the matter based on the papers already on file as the applicant had waived their right to an actual hearing!).

This decision reminds us that potential patentees will find themselves in a very difficult situation if an examiner has, with any justifiable reason, refused to search an application.  Given the body of case law on the subject, the only solutions for an applicant would be to overcome the excluded subject matter objection or otherwise have a strong argument as to why the examiner’s discretion has been wrongly applied.