2. Examination practice
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A revised version of this publication entered into force. |
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).
The question of whether there is an invention within the meaning of Art. 52(1) is separate and distinct from the questions of whether it is susceptible of industrial application, is new and involves an inventive step.
The exclusions from patentability under Art. 52(2) play a role in assessing both patent eligibility and inventive step because patent protection is reserved for inventions involving a "technical teaching", i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means. This twofold assessment is referred to as the "two-hurdle approach" (G 1/19).
The first hurdle, also referred to as the patent eligibility hurdle, requires that the claimed subject-matter as a whole must not fall under the "non-inventions" defined in Art. 52(2) and (3). The exclusion from patentability of the subject-matters and activities referred to in Art. 52(2) is limited by Art. 52(3) to such subject-matters or activities that are claimed "as such". This limitation is a bar to a broad interpretation of the non-inventions. It implies that one technical feature is sufficient for eligibility: If the claimed subject-matter is directed to or uses technical means, it is an invention within the meaning of Art. 52(1). This assessment is made without reference to the prior art.
The second hurdle is where inventive step is assessed. In addition to technical features, claims may also comprise non-technical features. In this context, the term "non-technical features" refers to features which, on their own, would be considered "non-inventions" under Art. 52(2). Inventive step of claims comprising such a mix of technical and non-technical features is assessed using the COMVIK approach (G-VII, 5.4). This approach is a special application of the problem-solution approach that involves establishing which features of the invention contribute to its technical character (i.e. contribute to the technical solution of a technical problem by providing a technical effect). A feature may support the presence of an inventive step if and to the extent that it contributes to the technical character of the invention. Whether any feature contributes to the technical character of the invention has to be assessed in the context of the invention as a whole.
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 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).