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a. Definition of a patentable invention

Although the European Patent Convention (EPC) does not provide any definition of an invention or a patentable invention, it is admitted by the jurisdiction of the European Patent Office that the first requirement to be met by an invention to be a patentable invention is the technical character of the invention.

Actually, the jurisdiction of the European Patent Office has developed in such a manner that a gradually larger definition of patentable objects was given, including computer programs.

In particular, it concerns a series of law cases, among which the most important decisions are T208/84, T26/86, T6/83, T158/88, T769/92, T59/93 and T953/94. That can be seen on the web-site of the European Patent Office, (www.european-patent-office.org).

b. Non patentable inventions

According to the Art. 52 (2) of the European Patent Convention (EPC),

"The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

(a) discoveries, scientific theories and mathematical methods;
(b) aesthetic creations;
(c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers;
(d) presentations of information."

These various innovations or "ideas" are not regarded as inventions as such, because they do not present a technical character and they do not solve a technical problem.

A discovery or a scientific theory is not patentable.

However, if the discovery of supra-conductivity at high temperature is not patentable as such, a new ceramic composition which is supra-conductive at high temperature is patentable.

An aesthetic creation that only presents aesthetic characteristics is not patentable, but may be protected by a design registration and by copyright.

A program for computer (software) is not regarded as an invention in so far at it is claimed as such. However, if the claimed subject-matter adds a contribution of a technical character to the known art, a patent should not be refused simply because a computer program is involved (Decision T208/84 (OJ 1987, 14)).

For more information, see also.

Further exclusions that were related to diagnostic and therapeutic methods are also provided.

According to the Art. 52 (4) of the European Patent Convention (EPC),
"Methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body shall not be regarded as inventions which are susceptible of industrial application."

However, Art. 52(4) further mentions that

"This provision shall not apply to products, in particular substances or compositions, for use in any of these methods."

For more information, see also.

Finally, plants and animals are also exceptions to patentability.

The Art. 53 of the European Patent Convention (EPC) states that European patents shall not be granted in respect of:

(a) inventions, the publication or exploitation of which would be contrary to "ordre public" or morality, provided that the exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;
(b) plant or animal varieties or essentially biological processes for the production of plants or animals, this provision does not apply to microbiological processes or the products thereof.
The patentability of inventions that may fall under these two exclusions are still under discussion in various forums in Europe.
These discussions were mainly induced by the recent approved directive of the European Parliament (European Directive 98/44/CE upon the legal protection of biotechnological inventions).

For more information, see also.

c. Novelty

According to Art. 54 of the European Patent Convention (EPC),

(1) : An invention has to be considered to be new, if it does not form part of the state of the art.
(2) : The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.
(5) : The provisions of paragraphs 1 and 2 shall not exclude the patentability of any substance or composition comprised in the state of the art, for use in a method referred to in Art. 52 (4), provided that its use for any method referred to in that paragraph is not comprised in the state of the art." (Decision G 1 83, Decision G 5 83, Decision G 6 83 (OJ 1985, 60-67).

The definition of the state of the art in the European Patent Convention amounts to absolute novelty.

It is extremely important to maintain, if possible, a strict confidentiality of the invention before the filing of a European patent application, because any public disclosure of your invention in any language (even by the inventors themselves) will anticipate the patentability of your invention in Europe at least (Decision T173/83 (OJ 1987,465), Decision T830/90 (OJ 1994, 713) and Decision T739/92)).

Exception

However, an earlier disclosure is not prejudicial, if it occurs no earlier than 6 months preceding the filing of a European patent application and was due to an evident abuse in relation to the applicant or if the applicant displays the invention at an officially recognised exhibition (Art. 55 of the European Patent Convention).

An example of an evident abuse in relation to the applicant is the fact that a third party has not respected a secrecy agreement and has made a public disclosure of the invention without the authorisation of the applicant.

In order to ensure that your invention is novel, we always recommend to arrange a search of the prior art, upon patent documents, upon published scientific papers and articles which refer to a similar invention.

This search is also extremely useful for the Patent Attorney in order to draft the claims of your patent application.

d. Inventive step

According to Art. 56 of the European Patent Convention (EPC),
"An invention should be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art."

The inventive step requirements are intended to prevent exclusive rights forming barrier to normal and routine development of a technology and the European Patent Office is seeking to make a realistic and balanced assessment to the invention step criteria.

It is important to note that patent laws do not explicitly define what an invention is, but only define when an invention is patentable. However, during more than 20 years, the European Patent Office has developed a detailed jurisprudence regarding this matter.

Determining whether or not an invention involves an inventive step depends on specific details of each patent application and in particular the subject-matter of each claim and the content of the state of the art.

Problem / Solution Approach

In the field of mechanics, the European Board of Appeals, when examining inventive step, usually refers to the problem/solution approach.

This method involves:

• firstly determining the closest prior art,
• establishing the technical problem to be solved by the invention (said invention being defined by the scope of the claims), and
• considering whether or not the claimed invention, starting from the closest prior art and the technical problem, would have been obvious to the person skilled in the art (European Guidelines for Examination (C-IV, 9.5).

The chosen closest prior art is usually a single document, such as a scientific publication or a previous published patent application.

The person skilled in the art is defined as an ordinary practitioner aware of what is common general knowledge in the art at a relevant date.

It is important to note that the person skilled in the art is allowed to practise routine experiments, but is not an inventor.

Definition of a person skilled in the art

In view of the fact that sufficiency of disclosure must be judged from the point of view of the skilled person, the definition of the person skilled in the art is of importance.

The Board of Appeal of the European Patent Office considered that the skilled person in the field of genetic engineering in 1978 was not to be defined as a Nobel prize laureate even if a number of scientists working at this field at that time were actually awarded that prize (Decision T60/89 (OJ 1992, 268)).

Rather it is understood that the skilled person was to be seen as a graduate scientist (or team of scientists) of that level or skill working in a laboratory which was developing genetic engineering and techniques as opposed to developing the science of molecular genetics at that time.

The Board further held that the same level of skill must be applied when the two questions of sufficient disclosure and inventive step have to be considered.

This was confirmed in the above decision with the difference that for sufficiency of disclosure, the skilled person knows the content of the application.

Summarising briefly it follows that, in case there is evidence that variants, especially a range of group of compounds, falling under the broad scope of a claim clearly fail to be active or to solve the underlying problem, lack of sufficiency of disclosure is indicated.

However, the disclosure of a single example in a protein having a particular activity can only serve as a basis for a broad claim if the specification enables the skilled person to find further examples of the protein without undue burden. This requires a broad general teaching in the description.

Comparative Tests

Usually, in the field of chemistry, pharmacy and biotechnology, the applicant demonstrates the inventive step of the invention by presenting comparative tests between the product of the invention and the product of the state of the art.

One single unexpected property of the new compound or the new composition (even if it is a combination of known elements) is sufficient to demonstrate the inventive step, even if said product presents other several drawbacks compared to the compound of the state of the art.

In the field of pharmacy, it is important to note that the requirements of patentability do not correspond to the requirements for obtaining an authorisation to put a pharmaceutical or biotechnological product upon the market.

Therefore, this is not necessary to demonstrate to an Examiner that the compound to be protected is characterised by a low toxicity or does not present possible side effects for the human or animal health or upon the environment.

Furthermore, according to the circumstances, other various factors can be taken into account, such as an unforeseen technical effect produced by the new combination of known elements, the degree of difficulty the person skilled in the art must overcome when combining several known documents or secondary considerations such as the fact that the invention solves a long standing technical problem.

e. Industrial application

According to Art. 57 of the European Patent Convention (EPC),

"An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture."

This requirement has been introduced in the European Patent Convention in order to allow only the grant of patents characterised by a technical effect.

f. Sufficiency of disclosure

According to Art. 83 of the European Patent Convention (EPC),

"The European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by the person skilled in the art".

The sufficiency of disclosure with the meaning of Art. 83 must be assessed on the basis of the application as a whole, including the description and claims, and if present, the drawings.

It has also been stated that the skilled person may use his common general knowledge to supplement the information contained in the patent application (Decision T212/88 (OJ1992, 28)). Textbooks and literature also form the general knowledge of the person skilled in the art.

However, it is extremely important that the specification provides enough content in order to allow the reproduction of the invention.

The disclosure must be reproducible without undue burden by the person skilled in the art.

However, even though a reasonable amount of trial and error was permissible when it came to define the sufficiency of disclosure (especially in an unexplored field or where there are many technical difficulties), the person skilled in the art had to have at his disposal, either in the specification or on the basis of common general knowledge, adequate information leading necessary and directly towards success, through the evaluation of initial failures (Decision T226/85 (OJ 1988, 336)).