Invention concept

To be patentable, it takes a invention.

Definition

An invention is not necessarily innovative (as one might think).

For patents, an invention is something technical :

• a product,
• a method,
• a device,
• use in a technological field (A52 (1) EPC).

This is very vague ...

To help us, the CBE has sought to define this concept in a hollow.

Exclusion of the concept of invention

Principle

Are excluded from patentability (A52 (2) EPC), if they are caught as such (A52 (3) EPC):

• business methods;
• discoveries, scientific theories and mathematical methods;
• aesthetic creations;
• plans, principles and methods:
  • in the exercise of intellectual activities,
  • in gaming, or
  • in the field of economic activities,
• computer programs;
• information presentations.

But only if they are caught as such (and there is all the difficulty, A52 (3) EPC): if one of these elements includes an additional technical element, it can be patentable!

Let's detail each of these exclusions for more details.

Discoveries, scientific theories and mathematical methods

Discoveries

Principle

A discovery is an observation of a pre-existing natural phenomenon.

Nevertheless, the application of a discovery for the creation of a new product may be patentable (Guidelines G-II 3.1) for example :

• a particularly impact-resistant compound implementing a scientific discovery;
• a substance found in nature produces a technical effect (eg an antibiotic effect) or a micro-organism that produces that substance;
• a gene of the human body making it possible to manufacture a certain protein / polypeptide (T236 / 96 or " V28 / ICOS " T1191 / 01).

Special case of biological matter

Moreover, the R27 (a) EPC stresses that is patentable a biological material isolated from its natural environment or produced by a technical process, even when it pre-existed in the natural state ».

Special case of gene sequences

This is also true for human gene sequences R29 (2) EPC :

An element isolated from the human body or otherwise produced by a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of this element is identical to that of a natural element.

Scientific theories

A scientific theory is simply an intellectual activity.

Nevertheless, new semiconductor devices and their manufacturing processes may be patentable even if the superconductivity theory is not (G-II Guidelines 3.2).

Mathematical methods

If a mathematical method (such as a rapid division method or an electrical filtering method) is not patentable, a machine implementing it can be (G-II Guidelines 3.3).

Decision " VICOM », T208 / 84 Stresses the difference between a mathematical method ( abstract concept prescribing how to deal with numbers") And a patentable technical process that uses a mathematical method (" this method applies to a physical entity (which may be a physical object, but also an image stored in the form of an electrical signal) [...] and this results in a certain modification of this entity").

For example, the phrase "to control a physical process" may allow the invention not to be a mathematical method as such (T953 / 84).

Aesthetic creations

Principle

Artistic creations are not patentable (Guidelines G-II 3.4).

Indeed, they already have specific protection: they are already protected by copyright, drawings and models.

Non-patentable aesthetic effect

In a case T119 / 88, an applicant was seeking protection for a "flexible envelope for CDs whose color was different from black". The plaintiff justified his invention in that the envelope avoided fingerprints.

Nevertheless, the Board of Appeal considered that the anti-fingerprint effect was purely aesthetic and was therefore not patentable.

Technical elements for obtaining a patentable aesthetic effect

For a claim to be considered an invention despite an aesthetic effect, the aesthetic effect must be obtained by a process or a technical means:

• a support for the realization of a work of art (T 686/90) because it is functional;
• a diamond cutting process to obtain particularly beautiful diamonds (Guidelines G-II 3.4);
• a fabric woven in a special way to make it silky;
• etc.

Intellectual or commercial plans, principles and methods

An abstract method (not allowing to obtain an industrial result) is not patentable (G-II Guidelines 3.5).

The typical example is the commercial sales method.

In the same way, if a method is very abstract (eg providing a drug based on the genotype of a patient), the method can be considered as a simple non-patentable principle (T758 / 12).

Today, jurisprudence considers that a method (even intellectual or commercial), but involving technical means constitute inventions within the meaning of theA52 (1) EPC (T619 / 02 or T931 / 95): if the method is really intellectual, it will be rejected as inventive step. However, it is necessary to claim these technical means (T388 / 04 and T619 / 02).

Computer programs

Principle

Exclusion on computer programs (Guidelines G-II 3.6) actually targets the source code of these programs and their attached documentation (the language words of the program are not technical in nature, T110 / 90).

The first case law of the EPO (VICOM, T208 / 84) is also very clear on the subject: a computer arranged to run a software for the execution of a technical process (eg image enhancement) is not a computer program as such.

The "additional technical effect" theory

Similarly, the decision T1173 / 93 (or IBM decision) or T935 / 97 (IBM II decision) highlights the fact that a program can be claimed. In those decisions, the Board of Appeal states that the normal physical effects (ie the electric current operating the processor) are not sufficient to allow the invention to be of a technical nature: it is necessary, at the stage of the analysis of exclusion from patentability, look at whether the additional technical effect Goes beyond these normal technical effects (the additional technical effect can be evaluated according to the state of the art identified).

This additional technical effect may, for example, be:

• control of a machine tool;
• data processing representing physical entities;
• the improvement of the internal functioning of the computer (increase of the speed of computation, compression of data, reduction of the necessary resources, decrease of transfer rate in a communication link, etc.).

The end of the "additional technical effect"

In the decision T931 / 95 (Pension Benefit decision), the Board of Appeal abandoned the theory of the additional technical effect: a product claim can not be excluded from patentability simply because it implements a purely intellectual computer method.

In fact, for the assessment of the technical nature, the state of the art should be disregarded (cf. T 1173/97, confirmed in the decision G3 / 08, see Guidelines G-II 3.6): thus, the technical character of a computer is enough to overcome the pitfall of non-patentability.

We must therefore return to an approach ofinventive activity to rule out such a claim. G3 / 08 validate this approach.

Presentation of information

An information presentation characterized only by the information it contains will not be patentable.

The simple generation and display of information, possibly in a pleasant and practical way, concerns the subjective perception of a user: this is therefore a presentation of information (T231 / 13).

Will be technical (Guidelines G-II 3.7):

• a telegraph or a communication system using character encoding (e.g., pulse code modulation);
• a data format allowing a better storage density in memory (T659 / 04);
• a measuring instrument for obtaining a particular form of graph representing the measured data;
• a disc having a groove of a particular shape for stereophonic recordings;
• a computer data structure (T1194 / 97) defined in terms that, intrinsically, include the technical characteristics of the program using it;
• a slide with a soundtrack on its periphery and an icon with alternating light and dark stripes giving a three-dimensional appearance (T1749 / 06);
• a man-machine interface to increase the efficiency of interactions with the user (Guidelines G-II 3.7.1).