1.1. Technical character of an invention

It has been part of the European legal tradition that patent protection should be reserved for technical creations. It was indeed always common ground that creations in engineering and technology were entitled to patent protection under the EPC (see e. g. T 22/85, OJ 1990, 12; T 154/04, OJ 2008, 46). The use of the term "invention" in Art. 52(1) EPC 1973 in conjunction with the so-called "exclusion provisions" of Art. 52(2) and (3) EPC 1973 was interpreted by the boards of appeal as implying a requirement of technical character or technicality to be fulfilled by an invention as claimed in order to be patentable (T 931/95, T 1173/97 and T 935/97). Thus an invention may be an invention within the meaning of Art. 52(1) EPC if, for example, a technical effect is achieved by the invention or if technical considerations are required to carry out the invention. In T 1173/97 (OJ 1999, 609) and T 935/97 the board stated that within the context of the application of the EPC the technical character of an invention was generally accepted as an essential requirement for its patentability. In T 931/95 (OJ 2001, 441) the board held that technical character was an implicit requirement of the EPC to be met by an invention in order to be an invention within the meaning of Art. 52(1) EPC 1973 (see also T 1543/06).

In T 154/04 (OJ 2008, 46) the board summarised the main principles underlying the relevant jurisprudence of the boards of appeal. 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 a technical character, even if linked to items listed in this provision since these items were 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 contributed to the technical character of the invention (see also T 931/95, OJ 2001, 441, T 914/02 and T 1543/06). The board observed that the intention of Art. 52(3) EPC 1973 was clearly to ensure that anything which had previously been a patentable invention under conventional patentability criteria should remain patentable under the EPC.

In T 619/02 (OJ 2007, 63) the board stated that, as had long been accepted, (see in this respect decisions T 22/85, OJ 1990, 12, T 931/95, OJ 2001, 441, and T 258/03, OJ 2004, 575), the technical character of an invention constituted a fundamental prerequisite inherent to Art. 52 EPC 1973 – and was formulated as an explicit requirement in Art. 52(1) EPC. Thus, technical character constituted a conditio sine-qua-non to be met by an invention susceptible of patent protection under the EPC. Additionally, the board noted that a technical invention is generally useful and practical within the generic meaning of these terms, but the reverse is not necessarily true, i.e. not every "practical art" and not every entity or activity that is practical or useful is necessarily technical in the patent law sense (see T 388/04, OJ 2007, 16). It was noted that in some national patent law systems, "useful" is the counterpart to the requirement of industrial applicability set out in Art. 57 EPC 1973 (see Note 5 to Art. 27(1) TRIPS); however, this special meaning of the term does not necessarily convey technical character either. Accordingly, considerations of usefulness and practicality are no substitute for, or criteria equivalent to the prerequisite of technical character inherent in the EPC. The board observed that although industrial applicability and technical character of an invention are intimately related to each other (T 854/90), they are not synonymous and constitute two distinct, non-equivalent requirements under the EPC 1973 (T 953/94).