Patents

Patentability

John Lambert

Last updated 29 Feb 2004

Art 52 (1) EPC provides that European patents shall be granted for any inventions which are susceptible of industrial application, new and involve an inventive step. The following are excluded by paragraph (2) of that article from the definition of inventions within the meaning of paragraph (1):

	discoveries, scientific theories and mathematical methods
	aesthetic creations
	schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers and
	presentations of information.

However, paragraph (3) qualifies paragraph (2) by limiting the exclusion of patentability only to the extent to which a European patent or European patent application relates to such subject matter or such activities as such. Also excluded are inventions the publication or exploitation of which would be contrary to ordre public or morality and plant or animal varieties or essentially biological processes for the production of plants or animals but not microbiological processes. S. 1 of the Patents Act 1977.

American and Japanese Requirements
It is interesting to compare art 52 (1) EPC with the corresponding provisions of the US and Japanese patent statutes. § 101 of the US Patents Act which provides:

"Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title"

In contrast to the European definition, the US definition of an invention in § 100 (a) specifically includes "discovery". S. 29 (1) of the Japanese Patents Law (Law No. 121 of April 13, 1959 as amended by Law No. 220 of December 22, 1999) provides:

"Any person who has made an invention which is industrially applicable may obtain a patent therefor, except in the case of the following inventions.",

The exceptions relate to novelty, obviousness and inventions which may not be patented for reasons of public policy. An invention is defined by section 2 (1) as "the highly advanced creation of technical ideas by which a law of nature is utilized." The absence of anything corresponding to article 52 (2) of the EPC in the American and Japanese patents legislation has no doubt facilitated the patenting of computer software and business method related inventions in those countries.

Amendments to Art. 52 (1)

The Act revising the EPC concluded at the diplomatic conference at Munich on 29 November 2000 provides that article 52 (1) should read as follows:

European patents shall be granted for all inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application."

The express reference to all "fields of technology" should encourage applications for computer, business method and biotechnology inventions in Europe.