Patentability

Novelty

An invention is not new if it forms part of the state-of-the-art. It must not have been made available to the public, anywhere in the world, prior to filing. There are limited categories of prior non-prejudicial disclosure. The requirement for novelty follows the principle that what is available by way of knowledge to humankind and what follows in an obvious way from it, should not be protected.

It is fatal to a patent application that the invention has been made available or published at any time in the past. In principle, anything which would be an infringement of the patent should not be available prior to the application.

If an ordinary skilled person would have been able to work out the invention from what is disclosed and general knowledge, then it may not be patentable. The state-of-the-art is deemed to include a patent application with earlier priority.

The new use or application of an existing article or thing is potentially patentable. There must be a new technical feature reflected in the new use. The novelty by itself cannot be a technical feature if there is no new technical effect.

Inventive Step

There must be an inventive step. Under the legislation, the invention must not clearly lack an inventive step. This criteria is separate from that of novelty to which it is related.

The question of whether there is an inventive step is determined by whether it is obvious to a person skilled in the art of the date of filing. What is obvious is that which flows logically beyond the existing state-of-the-art without the exercise of skill and ability beyond that exercised by a person skilled in the art.

The intellectual property office, and ultimately in the event of a dispute, the courts consider whether there is an inventive step. They consider a hypothetical person skilled in the art and ascertain the general knowledge available to the person. The inventive element of the application is considered relative to what would be obvious to a  person skilled in the art. An objective approach is taken.

Assessment

The pre-existing state-of-the-art should be determined and considered by the decision maker. The distinguishing technical features and effects of the invention are considered. The technical problem for which the invention is a solution is considered.

It is considered whether the skilled person would have solved the technical problem by the solution specified in the application. The question is whether the invention is technically obvious. The commercial considerations are not relevant.

The person skilled in the art is presumed to be a skilled practitioner in the relevant area with average knowledge and experience. He is presumed to have common general knowledge in the relevant area and have access to everything available in the state-of-the-art, including all documents and matters disclosed whatsoever.

Application

An invention must be capable of industrial application. It means it must be capable of use in industry, including agriculture.

This is very broadly defined. It covers a practical application. This is contrasted to the production of something static. In practice, this is a relatively easy criterion to achieve.

Aesthetic creations, discoveries, ideas and schemes for performing mental acts, playing a game or doing business are not patentable. Although a discovery as such is not patentable, its practical application in a product or process may be patentable.

Aesthetic creations, schemes and performances may qualify for copyright protection. Computer p programs do not qualify for patent protection but do qualify for special copyright protections.

Exclusions

Certain categories are specifically stated not to be an invention and thereby not capable of being patented. These include

• a discovery scientific theory or mathematical method
• a static creation
• a scheme rule or method for performing a mental act playing a game or doing business or program for a computer
• the presentation of information
• a method for treatment of the human or animal body by surgery or therapy
• a diagnostic method practised on the human or animal body, plant or animal variety or an essentially biological process for the production of plants and animals other than a microbiological processes and products thereof
• an invention whose use and exploitation would be contrary to public order or morality.

Certain of the above exclusions are potentially very broad in scope. A discovery of itself is not patentable. It is said to add to human knowledge only.

Mathematical methods of themselves are in much the same category as discoveries. There are not applied concepts and ideas. Mathematical methods may of course, be an important part, element or part of a process which is patentable, but some additional element is required.

Methods

A static creation will normally be protected by copyright. Copyright protects literary, dramatic, musical and artistic works.

Schemes rules are methods for performing a mental act, playing a game or doing business are not patentable. They may be otherwise protected, in particular by copyright law or trade secrets. Such schemes may form part of something that is patentable but is not patentable in itself.

Doing business is a broad exclusion and will cover many inventive concepts in the commercial sphere which are not directly associated with processes or products.

Computer Programmes

Computer programs are not patentable by themselves but may be protected by copyright. A computer program may be part of or instrumental in something which may be patented.

Regard is had to what the computer is doing rather than the means by which it is doing it. There must be some technical effect going beyond the operation of a computer program.

For the purpose of interpreting the exclusion from patentability of programs for computers, it is assumed that programs for computers cannot be considered as having a technical character for the very reason that they are programs for computers.  This means that physical modifications of the hardware (causing, for instance, electrical currents) deriving from the execution of the instructions given by programs for computers cannot per se constitute the technical character required for avoiding the exclusion of those programs.

Although such modifications may be considered to be technical, they are a common feature of all those programs for computers which have been made suitable for being run on a computer and, therefore cannot be used to distinguish programs for computers with a technical character from programs for computers as such.

Technical Character & Effect

It is thus necessary to look elsewhere for a technical character in the above sense: It could be found in the further effects deriving from the execution (by the hardware) of the instructions given by the computer program.

Where s effects have a technical character or where they cause the software to solve a technical problem, an invention which brings about such an effect may be considered an invention, which can, in principle, be the subject-matter of a patent.

Consequently, a patent may be granted not only in the case of an invention where a piece of software manages, by means of a computer, an industrial process or the working of a piece of machinery but in every case where a program for a computer is the only means, or one of the necessary means, of obtaining a technical effect in the above sense, where, for instance, a technical effect of that kind is achieved by the internal functioning of a computer itself under the influence of said program.

On condition that they are able to produce a technical effect in the above sense, computer programs may be considered as inventions and may be the subject-matter of a patent if the other requirements provided for by the EPC are satisfied.

The technical effect may also be caused by the functioning of the computer itself on which the program is being run, i.e. by the functioning of the hardware of that computer. It is clear that in this situation, too, the physical modifications of the hardware deriving from the execution of the instructions given by the program cannot per se constitute the technical character required for avoiding exclusion.

In this case, it is only the technical effect which matters when considering the patentability requirements, and no importance is attached to the specific further use of the system as a whole.

The expression “the system as a whole” means the hardware plus the software, that is, the system consisting of the hardware as programmed in accordance with the program concerned (hardware + software).