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I.
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Invention
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28
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The EPC does not define the meaning of "invention", but it does list subject-matter that cannot constitute an invention, or an invention susceptible of industrial application, or that is expressly excluded from patentability.
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Art. 52(2), (3), (4)
Art. 53, Art. 57
Guid. C-IV, 2.1-2.3
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In this respect your attention is particularly drawn to the following four fields:
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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.
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Art. 52(2)(c), (3)
Guid. C-IV, 2.3.6
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As regards the patentability of a computer program it is immaterial whether the program is claimed by itself, as a record on a data medium, as a method or as part of a computer system.
Thus computer-implemented inventions are not automatically excluded from patentability.
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30
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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 are not regarded as inventions susceptible of industrial application. This does not apply to products, substances and compositions for use in such methods, eg 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 its first medical or veterinary use by means of a claim of the form: "Substance X for use as a medicament"; in the case of subsequent therapeutic applications, the only allowable claims are those of the form: "Use of substance X for the manufacture of a medicament for therapeutic application Z".
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Art. 52(4), 57
Guid. C-IV, 4.2, 4.2.1
Art. 54(5)
Guid. C-IV, 4.2
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This exception does not exclude the patentability of other methods of treatment of live human beings and animals; 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.
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Guid. C-IV, 4.2.1
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31
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The third field is plant and animal varieties and essentially biological processes for the production of plants or animals, which are expressly excluded from patentability.
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Art. 53(b)
R. 23b, 23c
Guid. C-IV, 3.4
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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 consists entirely of natural phenomena such as crossing or selection.
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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.
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Guid. C-IV, 3.5
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31a
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The last field is inventions excluded from patentability because their publication or 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.
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Art. 53(a)
R. 23d
Guid. C-IV, 3.1, 3.2, 3.3, 3.3a, 3.3b
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B. Patentability
II. Novelty
