Concept of Invention

Definition

The code does not provide a definition of what it means by « invention. »

Contrary to what one might think, an invention is not necessarily innovative.

It is often considered that an invention is a technical solution to a technical problem (INPI Examination Guidelines, I-C-VII 1).

This is quite vague…

To assist us, the legislator has sought to define this concept by exclusion.

Exclusion from the Concept of Invention

Principle

Excluded from patentability (L611-10 IPC, paragraph 2), if considered as such:

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

However, this applies only if they are considered as such (and therein lies the difficulty, L611-10 IPC, paragraph 3): 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. Thus, merely discovering a new property of a known material or object is not patentable (L611-10 IPC, paragraph 2-a and INPI Examination Guidelines, I-C-VII 1.1).

Nevertheless, the use of a discovery for a practical application may be considered an invention (INPI Examination Guidelines, I-C-VII 1.1 and Paris Court of First Instance, July 3, 2014):

• a train crossbeam made from a known material, but whose excellent shock resistance has just been discovered;
• a process for obtaining a product that exists in its natural state.

Special Case of Biological Material

Biological material is material that contains genetic information and can reproduce or be reproduced in a biological system (L611-10 IPC, paragraph 4).

This material or a process for producing this material may be patentable as long as there is an industrial application (L611-10 IPC, paragraph 4).

Special Case of Gene Sequences

The mere discovery of a gene cannot give rise to a patentable invention (L611-18 IPC).

However, an application of this gene may be patented « to the extent necessary for the implementation and exploitation of that particular application » (L611-18 IPC).

Scientific theories

A scientific theory is merely an intellectual activity: it is therefore not an invention (L611-10 CPI, paragraph 2-a).

Nevertheless, the application of this theory to a new product may be patentable: new semiconductor devices and their manufacturing processes may be patentable even if the theory of superconductivity is not (INPI Examination Guidelines, I-C-VII 1.2).

Mathematical methods

While a mathematical method (such as a fast division method or an electrical filtering method) is not patentable (L611-10 CPI, paragraph 2-a), a machine implementing it may be (INPI Examination Guidelines, I-C-VII 1.3).

Again, while a mathematical method is not patentable as such, the application of mathematical tools to a concrete situation may be (e.g., a method for calculating a taxi fare, Paris Court of Appeal, 1st Chamber, Section G, solemn hearing, February 18, 2004, in which the Court held that the claimed invention constituted the technical solution to a technical problem by enabling the correct determination of the fare, even though this determination consisted of a simple manipulation of data).

Aesthetic creations

Principle

Artistic creations are not patentable (L611-10 CPI, paragraph 2-b).

Indeed, they already benefit from specific protection: they are already protected by copyright and designs (INPI Examination Guidelines, I-C-VII 1.4).

Non-patentable aesthetic effect

For example, a sleeve for a floppy disk characterized by its color to prevent marking by fingerprints is considered purely aesthetic: this sleeve is therefore not patentable (INPI Examination Guidelines, I-C-VII 1.4).

Technical features for achieving 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 (INPI Examination Guidelines, I-C-VII 1.4).

This is normal, as design protection is then insufficient (L511-8 CPI, 1°).

This may notably be the case for (INPI Examination Guidelines, I-C-VII 1.4):

• tread patterns of a tire;
• a fabric whose texture, comprising a certain number of layers, gives it an attractive appearance;
• a book characterized by a technical feature of the binding or the gluing of the spine;
• a painting characterized by the type of canvas, the pigments, or the binders used.

Plans, principles and intellectual or business methods

An abstract method (not enabling an industrial result to be obtained) is not patentable (L611-10 CPI, paragraph 2-c).

This is notably the case for (INPI Examination Guidelines, I-C-VII 1.5):

• a teaching method;
• game rules (even if technical elements are involved in an ancillary manner, not independently of the rules, INPI Examination Guidelines, I-C-VII 1.5.b);
• a business sales method (even if this method is implemented by computer, INPI Examination Guidelines, I-C-VII 1.5.c, since the sought effect is non-technical, Cour d’appel de Paris, ch.04, sect. B, 10 January 2003);
• a brokerage system implemented by computer, the system not being described in technical terms (Cour d’appel de Rennes, 2e ch. com., 7 October 2003);
• a method proposing to insurers a way to verify the use made by policyholders of sums paid as compensation (Cour d’appel de Paris, 4e ch., sect. A, 15 March 2006);
• etc.

Adding a « server » does not confer a technical character to the system if this server is a « conventional » server without specific features (Cour d’appel de Paris, 4e ch., sect. A, 15 March 2006).

Nevertheless, an invention has a technical character (i.e., not purely intellectual) as soon as it provides an immediate technical result (Tribunal de Grande Instance de Paris, 3e ch., 2e sect., 1 February 2008).

Computer programs

The exclusion relating to computer programs (L611-10 CPI, paragraph 2-c) actually targets the source code of these programs, which is protected by copyright (INPI Examination Guidelines, I-C-VII 1.6).

However, if the computer program has a technical effect, this program may be patented (INPI Examination Guidelines, I-C-VII 1.6).

The « patentable » computer program may relate to (INPI Examination Guidelines, I-C-VII 1.6):

• the control of an industrial process;
• the processing of data representing physical entities;
• the improvement of the internal functioning of the computer (e.g., data compression, acceleration of calculations, etc.);
• the improvement of data security;
• etc.

Presentation of information

The mere presentation of information is not patentable (L611-10 CPI, paragraph 2-d).

This exclusion covers (INPI Examination Guidelines, I-C-VII 1.6):

• the presentation of information itself (e.g., a sound, a lookup table, a musical notation system);
• media characterized solely by the information they carry.

The Paris Court of Appeal clarified this notion: a presentation of information is understood as a presentation characterized by its capacity to convey information, thus concerning both its cognitive content and the manner in which it is presented (Cour d’appel de Paris, Pôle 5, 1re ch., 21 May 2019, Case No. 18/19669).