3.1.001 European patents are granted for inventions that are new, involve an inventive step and are susceptible of industrial application. An invention can belong to any field of technology.
3.2.001 The EPC does not define the meaning of "invention", but it does provide a non-exhaustive list of subject-matter and activities that may not be regarded as inventions, i.e. that are expressly excluded from patentability.
In this respect your attention is particularly drawn to the following four fields:
3.2.002 The first is programs for computers, which are not regarded as inventions if claimed as such. However, a computer program is not excluded from patentability under Article 52 if, when running on a computer, it causes a further technical effect going beyond the "normal" physical interaction between the program (software) and the computer (hardware). An example of a further technical effect is where the program serves to control a technical process or governs the operation of a technical device. The internal functioning of the computer itself under the influence of the program could also bring about such an effect.
Thus computer programs are not automatically excluded from patentability. More information about the patentability of computerimplemented inventions is available on the EPO website (epo.org).
3.2.003 The second field is methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body. These inventions are expressly excluded from patentability. The exclusion from patentability does not apply to products, substances and compositions for use in such methods, e.g. medicaments or surgical instruments. Substances and compositions are in fact singled out for special treatment in the EPC as regards the novelty requirement: even a known substance or composition may be patented for further medical or veterinary uses, provided that such use is novel and inventive.
This exception does not exclude the patentability of other methods of treatment of living human beings and animals; moreover the treatment of body tissues after they have been removed from the human or animal body and diagnostic methods applied to such tissues are patentable as long as the tissues are not returned to the same body.
3.2.004 The third field is plant and animal varieties and essentially biological processes for the production of plants or animals and the plants or animals exclusively obtained by such processes, which are expressly excluded from patentability.
In the case of plant varieties, a separate form of protection is available in most contracting states and under EU law.
A process for the production of plants or animals is essentially biological if it is based on sexual crossing of whole genomes and on the subsequent selection of plants or animals, even if other technical steps relating to the preparation of the plant or animal or its further treatment are present in the claim before or after the crossing and selection steps.
The exclusion does not apply to microbiological processes or the products of such processes. In general, biotechnological inventions are also patentable if they concern biological material that is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature.
3.2.005 The last field is inventions excluded from patentability because their commercial exploitation would be contrary to "ordre public" or morality. In particular, patents are not granted in respect of processes for cloning human beings, processes for modifying the germ line genetic identity of human beings, uses of human embryos for industrial or commercial purposes, or processes for modifying the genetic identity of animals that are likely to cause them suffering without any substantial medical benefit to man or animal, and also animals resulting from such processes.
3.3.001 An invention is considered to be new if it does not form part of the state of the art.
The definition of the state of the art in the EPC reflects the principle of absolute novelty: the state of the art comprises everything made available to the public anywhere in the world by means of a written or oral description, by use, or in any other way, before the date of filing or priority. However, novelty is prejudiced only by something which is clearly disclosed to a skilled person in a single source of prior art, e.g. in a patent application published before the date of priority.
3.3.002 An earlier disclosure of the invention is non-prejudicial only if it occurred less than six months before the filing of the European patent application and was due to an evident abuse in relation to the applicant or to display at an exhibition falling within the terms
of the Paris Convention on international exhibitions. Except in these two cases, the second of which is rare in practice, any disclosure of the invention before the date of filing or, if applicable, the earliest priority claimed (see point 4.1.021) can be cited against the applicant as forming part of the state of the art, even if the applicant themself was responsible for the disclosure.
3.3.003 The state of the art is also held to comprise the content of Art. 54(3), 89 European patent applications filed before the date of filing or GL B-VI, 4 priority but not published until on or after that date.
A PCT application which is filed before the date of filing or priority Art. 153(5) but not published until on or after that date and for which the EPO R. 165 acts as designated Office forms part of the state of the art for the GL G-IV, 5.2 purposes of Article 54(3) if the filing fee has been paid to the EPO and the PCT application is published in one of the EPO's official languages (English, French or German). If the PCT application was published in Arabic, Chinese, Japanese, Korean, Portuguese, Russian or Spanish, a translation into one of the official languages of the EPO must have been filed with the EPO, which will publish it (see point 2.3.002).
Everything in the earlier application as filed is prejudicial to novelty.
The consequences that any earlier national patent applications or Art. 139(2) patents have for the patentability of the invention in the designated GL H-III, 4.4 contracting states are assessed by the competent national courts after the European patent has been granted (but see point 4.2.040).
3.3.004 As a rule, a conflict between two European patent applications has Art. 56 only limited consequences, as the disclosed content of the earlier GL G-IV, 5 application is relevant only to the assessment of the later application's novelty, not its inventive step. Hence the later application's claims can mostly be drafted in such a way that the earlier application is not prejudicial to novelty.
3.4.001 An invention is held to involve an inventive step if it is not obvious Art. 56 to the skilled person in the light of the state of the art (which does not include prior rights, see points 3.3.003-3.3.004). In assessing inventive step as opposed to novelty (see point 3.3.001), multiple sources of prior art may be applied.
The inventive step requirement is intended to prevent exclusive rights forming barriers to normal and routine development.
3.4.002 The EPO seeks to make a realistic and balanced assessment of GL G-VII the inventive step criterion. Inventive step is usually evaluated on the basis of the "problem/solution" approach, in other words whether the solution presented to the problem in the patent application is obvious or not to the person skilled in the art.
This always depends on the specific circumstances of the case. Depending on the situation, various factors are taken into account, such as the unexpected technical effect of a new combination of known elements, the choice of specific process parameters within a known range, the difficulty the skilled person has in combining known documents, secondary indicia such as the fact that the invention solves a long-standing technical problem which there have been many attempts to solve, or the overcoming of a technical prejudice.
If you need more detailed information, you are advised to refer to the Guidelines for Examination and to the decisions of the boards of appeal (see point 2.1.002).
