To be patentable, there must be an invention.
Definition
An invention is not necessarily novel (as one might think).
For patents, an invention is something technical:
- a product,
- a process,
- a device,
- a use in a technological field (A52(1) EPC).
This is quite vague…
To help us, the EPC has sought to define this concept by exclusion.
Exclusion from the concept of invention
Principle
Excluded from patentability (A52(2) EPC), if considered as such (A52(3) EPC):
- business methods;
- discoveries, scientific theories, and mathematical methods;
- aesthetic creations;
- plans, principles, and methods:
- in the performance of intellectual activities,
- in playing games, or
- in the field of economic activities,
- computer programs;
- presentations of information.
But only if considered as such (and herein lies the difficulty, A52(3) EPC): thus, if one of these elements includes an additional technical feature, it may be patentable!
Let us examine each of these exclusions in more detail.
Discoveries, scientific theories, and mathematical methods
Discoveries
Principle
A discovery is the observation of a pre-existing natural phenomenon.
However, the application of a discovery to create a new product may be patentable (Guidelines G-II 3.1), for example:
- a compound particularly resistant to impacts utilizing a scientific discovery;
- a substance found in nature that produces a technical effect (e.g., an antibiotic effect) or a microorganism that produces this substance;
- a human gene enabling the production of a certain protein/polypeptide (T236/96 or « V28/ICOS » T1191/01).
Special case of biological material
Furthermore, R27 a) EPC states that « biological material isolated from its natural environment or produced by means of a technical process is patentable, even if it previously occurred in nature. »
Special case of gene sequences
This also applies to human gene sequences R29(2) EPC:
An element isolated from the human body or otherwise produced by means of a technical process, including the sequence or partial sequence of a gene, may constitute a patentable invention, even if the structure of that 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 theory on superconductivity is not (Guidelines G-II 3.2).
Mathematical methods
While a mathematical method (such as a fast division method or an electrical filtering method) is not patentable, a machine implementing it may be (Guidelines G-II 3.3).
The decision « VICOM« , T208/84 highlights the difference between a mathematical method (« an abstract concept prescribing how to process numbers« ) and a patentable technical process that uses a mathematical method (« this process is applied to a physical entity (which may be a material object, but also an image stored in the form of an electrical signal) […] and results in a certain modification of that entity« ).
For example, the expression « for controlling 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 benefit from specific protection: they are already protected by copyright and designs.
Non-patentable aesthetic effect
In case T119/88, an applicant sought protection for a « flexible CD sleeve with a color different from black ». The applicant justified the invention on the grounds that this sleeve prevented fingerprints.
However, the board of appeal considered that the anti-fingerprint effect was purely aesthetic and therefore not patentable.
Technical features for obtaining a patentable aesthetic effect
For a claim to be considered an invention despite an aesthetic effect, the aesthetic effect must be achieved through a process or technical means:
- A support for creating a work of art (T 686/90) as it is functional;
- A diamond cutting process to produce particularly beautiful diamonds (Guidelines G-II 3.4);
- A fabric woven in a particular way to make it silky;
- etc.
Plans, principles and intellectual or business methods
An abstract method (not enabling the achievement of an industrial result) is not patentable (Guidelines G-II 3.5).
The typical example is a business method of sale.
Similarly, if a method is highly abstract (e.g., providing a drug based on a patient’s genotype), it may be considered that the method is a mere non-patentable principle (T758/12).
Today, case law considers that a method (even intellectual or business-related), but involving technical means, constitutes an invention within the meaning of A52(1) EPC (T619/02 or T931/95): if the method is truly intellectual, it will be rejected on the grounds of inventive step. Nevertheless, it is necessary to claim these technical means (T388/04 and T619/02).
An intellectual method must involve only the human brain. If the method implies the use of something external to the brain (such as an object, hands, or eyes), this method cannot be qualified as intellectual (T2720/16).
Computer programs
Principle
The exclusion concerning computer programs (Guidelines G-II 3.6) actually targets the source code of these programs and their attached documentation (the words of the programming language do not have a technical character, T110/90).
The EPO’s early case law (VICOM, T208/84) is quite clear on this subject: a computer arranged to run software for executing a technical process (e.g., image enhancement) is not a computer program as such.
Today, it is considered that a method involving « technical means » constitutes an invention (T258/03). There is then a shift in the threshold: while the patentability threshold may be « easily » crossed, this does not mean that the threshold for « inventive step » is.
Presentation of information
A presentation of information characterized solely by the information it contains will not be patentable.
The mere generation and display of information, even in a pleasant and practical manner, pertains to the subjective perception of a user: this therefore constitutes a presentation of information (T231/13).
Will be technical (Guidelines G-II 3.7):
- A telegraph or communication system using character coding (e.g., pulse-code modulation);
- A data format enabling higher storage density in memory (T659/04);
- A measuring instrument enabling a particular form of graph representing the measured data;
- A record having a groove of a particular shape enabling stereophonic recordings;
- A computer data structure (T1194/97) defined in terms that inherently include the technical features of the program using it;
- A slide with a sound track on its perimeter and an icon with alternating light and dark stripes giving a three-dimensional appearance (T1749/06);
- A human-machine interface enabling increased efficiency of user interactions (Guidelines G-II 3.7.1).