Well, exciting times in the world of software and business method patents and the area of inventions excluded from patentability. Yesterday, we had the long-awaited Bilski decision in the States. This follows not long after the also much-anticipated decision from The European Patent Office (EPO) Enlarged Board of Appeal.

The President of the EPO had referred to it several questions about the patentability of computer implemented inventions. The Board didn’t find any conflict in the case law and declared itself happy with the way things have developed. In a nutshell, the EPO takes a ”technical effect” approach; it looks at computer implemented inventions in terms of whether they constitute a novel and inventive technical solution to a technical problem. If so, all is well.

In the UK, the question of how to determine excluded subject matter has also enjoyed the limelight over the past few years. The approach here is different, the four point test is the way to go (1. properly construe the claim; 2. identify the actual contribution; 3. ask whether it falls solely within the excluded subject matter; and, 4. check whether the actual or alleged contribution is actually technical in nature), and although it appeared for a while that UK Intellectual Property Office and EPO attitudes were diverging – the UKIPO seemed to go very anti-software for a while - we have since been told that the two approaches are in fact wholly consistent and, although each Office may take a different route, they should both end at the same destination.

For more information about software patents in US, UK and Europe, contact Assaf Weiler at assaf@fwgip.com.

The UKIPO gives preferential treatment to patent applications realting to environmentally-friendly technologies. It will fast-track any green application. The requirement to satisfy the UKIPO about the environmental benefits of the invention that is the subject of the application is not very onerous: a simple letter to the UKIPO at the time of filing the application will do the trick!

These days, it’s possible to do a fair amount of patent searching yourself, using Espacenet, Google and a number of other sites. There is also a huge array of patent search providers. But, if the cost of a prior art search is going to run to several £’000s – as is typical – why not go straight for a patent application as your search vehicle? In other words, why spend £’000s (on a search) to decide whether to spend £’000s (on a patent application) which provides you with a search anyway!

For instance, you’ve come up with a wizard new gizmo. Your first instinct is to determine whether it’s patentable. Your mindset is such that you’ll only file a patent application if your reasonably certain that you’ve got something patentable. So, you first have search carried out, review the results and take the decision whether to go ahead. Well, why not change your mindset? Instead of asking yourself “is my gizmo patentable?”ask yourself  “shouldn’t I take whatever steps I can to protect my wizardry and the competitive advantage it offers?” Conducting a search first is not going to alter the answer to this new question; the search may give you an indication of the likely breadth and strenth of protection you’re entitled to, but it doesn’t alter the fundamental issue. On the other hand, it may delay when you file your patent application, which, in some countries, could be to your cost.

The UK IPO, for example, offers a high quality search – UK examiners use the same tools as EPO examiners – at a very modest cost. Indeed, the cost of requesting both search and examination of a UK patent application is, to be quite honest, cheap. And search and examination is conducted relatively quickly, within months. So, next time you think “I should get a patent search done”, think instead “I should get a UK patent application prepared and filed”, then you’ll have got the ball rolling on whatever protection you’re entitled to at the earliest opportunity and, within a few months, you’ll have an official search and examination report giving you an indication of whether your invention is indeed new and inventive. Even if your invention turns out to be struggling for patentability, you’re no worse off; you’ll only have spent about what you would anyway have spent on a search to come to the same conclusion; in fact, your actually better off, because now you’ve got a pending patent application which may remain pending for sometime.

In the UK at least, patents have poor visibility and there’s a lot of mis-information flying around. No wonder then that many private and individual inventors don’t know which way to turn when it comes to finding out what’s involved in protecting their inventions. Well, turn to us, Fisher Weiler Jones; we can help.

We are intellectual property professionals offering advice and support on all areas of intellectul property, including patents. We are happy to provide a free initial consultation at either of our offices in York or London. You will find that we offer practical, value-for-money solutions. And dealing with professional advisers can be a daunting prospect, which is why we avoid unnecessary formality.

Contact Kelly Virdee-Crofts, director at Fisher Weiler Jones UK, on 0844 811 7010 or Kelly@fwgip.com.

The EPO has recently introduced a number of “bring forward” measures into the European patent application process, including obligatory responses shortly after entry into the European regional phase (where the EPO was the ISA/IPER) and to extended European search reports. In addition, the PACE programme is available, under which an applicant can request accelerated prosecution. No fee is involved and, for example in the case of examination, the EPO will endeavour to examine the application within a few months of a PACE request. Also, non-prority claiming applications are fast tracked, with search promised within six months,  and an applicant waiving the opprotunity to do certain things in the application process can be another way of speeding things up.

If you’re ever struggling to respond in time to a European patent application examination report, say, because you’re waiting to clinch a big deal that makes continuing with the application worthwhile, don’t forget the possibility of further processing.

Typically, an examination report from the EPO will have an initial response perod of four months, calculated from ten days after the report is issued. A two month extension is readily available; no official fee is payable. After that, extensions are harder to come by, granted only in special cases.

But what do you do if the extended period still doesn’t give you enought time? Well, the further processing mechanism is available.

In essence, further processing enables you to buy some more time. If you don’t respond in the extended period, you will get a Noting loss of right communication, probably, some weeks after the end of the period. But if, within two months of receiving the communication, you request further processing, pay a fee of Euros 225 and file a response, the loss of rights will be deemed never to have occurred.

So, in other words, by using further processing, you can extend the period for responding to an examination report to somewhere in the region of nine months without prejudicing your rights.

On 01 May 2010, Albania became a member of the European Patent Organisation.

Albania joins the 27 EU member states plus Croatia, the former Yugoslav Republic of Macedonia, Iceland, Liechtenstein, Monaco, Norway, San Marino, Switzerland and Turkey as states for which the European Patent Office provides a centralised patent application examination procedure. Added to this are the extension states of Bosnia and Herzegovina, Montenegro and Serbia who recognise European patents on request.