专利客体01 | EPO专利审查指南
Daily IP English 207:
你好，我是大岭（微信ID: dalingIPR），今天我们学习EPO专利审查指南关于专利客体认定的基本方法。
In considering whether the subject-matter of an application is an invention within the meaning of Art. 52(1), there are two general points the examiner must bear in mind. Firstly, any exclusion from patentability under Art. 52(2) applies only to the extent to which the application relates to the excluded subject-matter as such (Art. 52(3)). Secondly, the subject-matter of the claim is to be considered as a whole, in order to decide whether the claimed subject-matter has a technical character.
https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii.htm
Chapter II – Inventions
1. General remarks
2. Examination practice
3. List of exclusions
4. Exceptions to patentability
5. Exclusions and exceptions for biotechnological inventions
1. General remarks
The EPC does not define what is meant by "invention", but Art. 52(2) contains a non-exhaustive list of things which are not regarded as inventions. It will be noted that the items on this list are all either abstract (e.g. discoveries or scientific theories) and/or non-technical (e.g. aesthetic creations or presentations of information). In contrast to this, an "invention" within the meaning of Art. 52(1) must be of both a concrete and a technical character (see G‑I, 2(ii)). It may be in any field of technology.
2. Examination practice
In considering whether the subject-matter of an application is an invention within the meaning of Art. 52(1), there are two general points the examiner must bear in mind. Firstly, any exclusion from patentability under Art. 52(2) applies only to the extent to which the application relates to the excluded subject-matter as such (Art. 52(3)). Secondly, the subject-matter of the claim is to be considered as a whole, in order to decide whether the claimed subject-matter has a technical character. If it does not, there is no invention within the meaning of Art. 52(1).
It must also be borne in mind that the basic test of whether there is an invention within the meaning of Art. 52(1) is separate and distinct from the questions whether the subject-matter is susceptible of industrial application, is new and involves an inventive step. Technical character is assessed without regard to the prior art (see T 1173/97, confirmed by G 3/08).
It is to be noted that the assessment of technical character does not stop as soon as it has been established that the claim as a whole is not excluded from patentability under Art. 52(2) and (3). In claims comprising technical and non-technical features, each feature has to be evaluated to see if, in the context of the invention, it contributes to the technical character of the claimed subject-matter, since this is relevant for assessing inventive step (see G‑VII, 5.4).
Where it is found that the claims relate in part to excluded subject-matter, this may have led to the issuing of a partial European or supplementary European search report under Rule 63 (see B‑VIII, 1, 3.1 and 3.2). In such cases, in the absence of appropriate amendment and/or convincing arguments provided by the applicant in his response to the invitation under Rule 63(1) (see B‑VIII, 3.2) or to the search opinion under Rule 70a (see B‑XI,8), an objection under Rule 63(3) will also arise (see H‑II, 5).
3. List of exclusions
The items on the list in Art. 52(2) will now be dealt with in turn, and further examples will be given in order better to clarify the distinction between what is patentable in the sense of not being excluded from patentability under Art. 52(2)and (3) and what is not.
3.1 Discoveries
3.2 Scientific theories
3.3 Mathematical methods
3.4 Aesthetic creations
3.5 Schemes, rules and methods for performing mental acts, playing games or doing business
3.6 Programs for computers
3.7 Presentations of information
4. Exceptions to patentability
4.1 Matter contrary to "ordre public" or morality
4.2 Surgery, therapy and diagnostic methods
5. Exclusions and exceptions for biotechnological inventions
5.1 General remarks and definitions
5.2 Patentable biotechnological inventions
5.3 List of exceptions (Rule 28)
5.4 Plant and animal varieties, essentially biological processes for the production of plants or animals
5.5 Microbiological processes
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