User talk:Pearcedh

From Wikipedia, the free encyclopedia

Welcome!

Hello, Pearcedh, and welcome to Wikipedia! Thank you for your contributions. I hope you like the place and decide to stay. Here are some pages that you might find helpful:

I hope you enjoy editing here and being a Wikipedian! Please sign your name on talk pages using four tildes (~~~~); this will automatically produce your name and the date. If you need help, check out Wikipedia:Questions, ask me on my talk page, or place {{helpme}} on your talk page and someone will show up shortly to answer your questions. Again, welcome!  --Edcolins 13:37, 31 July 2006 (UTC)

[edit] European patent law

In European patent law#National patents you contributed the sentence "UK courts and Patent Office have arrived at apparently slight differences in interpretation of patentability of certain subject matter, for instance in the area of patent applications for computer software and business methods (see for example Software patents under United Kingdom patent law), but these differences are often more imagined than real."

Could you elaborate or clarify the tension between the first and second halves of this sentence? If there are differences, then you can bet that lawyers and applicants are trying to exploit them - making them "real." Could you discuss a couple examples of differences, or give links to other discussions, and then either show that the differences are either "real" or "imagined?" I suspect that the answer is that the EPC will grant certain patents, but at the end of the day, validity will be vetted out under UK law, with littel or no deference to the EPO Boards of Appeal - thus there are differences in what patents will issue, but no difference in the patents that can be enforced.

I'm asking from the point of view of a somewhat-naive U.S. lawyer who has to advise U.S. clients from time to time, either how to "spin" a patent application to get through one office or the other, or advise the client that it's just not worth the effort.

Thanks for your help.

Boundlessly 18:32, 13 August 2006 (UTC)

I've done a bit of expanding on the subject. After talking to some examiners at the UK Patent Office, it is clear that they do not want to fully follow the examination approach suggested by Hitachi, since this would require them to carry out searches on practically all applications, provided that they have at least one 'technical feature'. This would apparently be impractical and expensive, and the UKPO prefer to rely on the provision of s17(5), stating that a search would serve no useful purpose. The EPO instead prefers to rely on an inventive step type of argument, arguing for example that the contribution to the art the claimed invention makes lies within the area of excluded subject matter. The approaches are therefore different, but the outcomes should be the same.

There are always different spins one can put on an application, depending on the subject matter and what is the flavour of the week (things are still in a state of flux since the recent flurry of decisions), both by the courts and at the Office. Advising a client that it's not worth the effort may, of course, depend on how keen the client is, and how deep their pockets are.

Pearcedh 08:37, 14 August 2006 (UTC)

Retrieved from "http://en.wikipedia.org../../../p/e/a/User_talk%7EPearcedh_81d8.html"