[Patents] Re: Proposal for Revision of EPC 52

[Jean-Jacques de Jong jean-jacques_de-jong@hp.com]

PILCH Hartmut wrote:
> 
>                   Proposal for Revision of EPC §52
> ...
>
> Our proposal for reform of §52
> 
> Article 52 - Patentable Inventions
> 
>     1. European Patents are granted for industrial inventions, i.e. new
>        problem solutions, which are difficult to find and are applied in
>        the mass production of tangible goods.[1]
> 
>    Items of the following categories do not in themselves constitute
>    industrial inventions, but may form parts of industrial inventions:
>     1. information of all kinds, including data and programs stored on
>        storage media of any kind.[2]
>     2. the use of aesthetic forms for any purpose[3]
>     3. human thinking and social interaction, including the playing of
>        games, the organisation of companies, the rendering of services,
>        the medical treatment of people and animals.[4]
>     4. living beings and parts thereof[5]
> 
> ...
>
> Notes
> 
>    [1] A patentable invention must fulfill the following criteria
>     1. Novelty
>     2. inventivity (Patents should recompense inventors for a significant
>        effort, usually several manyears of research work. A single
>        "inventive step" should not be deemed enough. Criteria and methods
>        for assessing the inventiveness should be worked out separately.)
>     3. Technicality (the invention should solve a problem. Its value
>        consists in usefulness, not in beauty. Remark: The patent offices
>        have recently pushed the notion of "technicality" to the
>        foreground and claimed that this is the underlying notion of §52.
>        This does not hold. Narration techniques, composition techniques,
>        negotiating techniques, programming techniques etc are all
>        technical. It is their lack of industrial application that usually
>        puts them outside the scope of §52.)
>     4. industriall application (The invention must be industrially
>        applicable, i.e. involve an industrial application, i.e. mass
>        production of material goods. Patents give their owner the right
>        to prevent others from applying his ideas to the mass production
>        of material goods, nothing else.)
> 
>    [2] world 3. This area is subject to copyright as well as to civil
>    liberties such as freedom of expression. However an industrial
>    application of an informational technique can be patented.
>    [3] These are not problem solutions. This area is subject to
>    industrial design certificate law.
>    [4] World 2; subject to civil liberties.
>    [5] living beings do not need to be industrially produced. Not seeds
>    but only technologies for industrial applications involving seeds are
>    to be patentable.

Hartmut, did you read the Guidelines for Substantive Examination, part
C? If not, I would suggest you to (there is also a German version if you
prefer):
http://www.european-patent-office.org/guidelines/english/c_toc.htm.
These are all the practical rules and criteria which should be applied
by the examiners. They derive from all the *consistent* case law of the
past years. This will help you feel the difference between theory (the
text of the law) and practice (how the law is interpreted).

JJJ