6.2. Scope of application

The case law clearly shows that this list of "excluded" subject-matter should not be given too broad a scope of application; Art. 52(3) EPC is a bar to a broad interpretation of Art. 52(2) EPC (G 2/12 and G 2/13, OJ 2016, A28 and OJ 2016, A29; T 154/04).

In T 154/04 (OJ 2008, 46) the board stated that the enumeration of typical non-inventions in Art. 52(2) EPC 1973 was merely a negative, non-exhaustive list of what should not be regarded as an invention within the meaning of Art. 52(1) EPC 1973. It was the clear intention of the contracting states that this list of "excluded" subject-matter should not be given too broad a scope of application. Thus Art. 52(3) EPC 1973 was introduced as a bar to such a broad interpretation of Art. 52(2) EPC 1973. By referring explicitly to the "patentability of the subject-matter or activities", paragraph 3 actually enshrined the entitlement to patent protection for the non-inventions enumerated in paragraph 2 – albeit restricting this entitlement by excluding patentability "to the extent to which a European patent application or European patent relates to such subject-matter or activities as such". That no paradigm shift was intended may also be seen from the fact that e.g. Switzerland as a contracting state considered it unnecessary ("überflüssig") to include the contents of Art. 52(2) and (3) EPC 1973 in the national regulations when harmonising them with the EPC 1973 (see "Botschaft des Bundesrates an die Bundesversammlung über drei Patentübereinkommen und die Änderung des Patentgesetzes", 76.021, 24 March 1976, page 67).

Further, the board held that "technical character" was an implicit requisite of an "invention" within the meaning of Art. 52(1) EPC 1973 (requirement of "technicality"). Art. 52(2) EPC 1973 did not exclude from patentability any subject-matter or activity having technical character, even if linked to items listed in this provision since these items are only excluded "as such" (Art. 52(3) EPC 1973). In examining the patentability of an invention in respect of a claim, the claim had to be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention. These principles had indeed a clear and consistent basis in the EPC and in the case law of the boards of appeal and the Enlarged Board of Appeal, in particular (see also G 3/08 date: 2010-05-12, OJ 2011, 10; T 931/95, OJ 2001, 441; T 914/02; T 2383/10).

For further information on the technical character of the invention, see in this chapter I.A.3. " Technical character as a requirement for an invention".

The issue of inventions with technical and non-technical subject-matter of an invention (mixed inventions) is analysed in detail in sub-chapter "Treatment of technical and non-technical features", within the chapter I.D.9. "Assessment of inventive step".