Excluded Subject Matter (1) - Overview

The exclusion of various innovations from patent protection by the European Patent Convention (EPC) is one of the most thoroughly discussed, and controversial, aspects of the EPC. The EPC does not include a definition of "inventions" which can be patented, but rather takes a negative approach by defining an exception to patentability for medical treatments and sets out a number of areas which are not considered inventions. 

Specific approaches have developed for the exception & for each of the areas which are not considered inventions, which we will discuss in future articles. In this article we will take a high level view of the two types of exclusions (as they are usually summarized) and how they are treated in general. 

Exceptions

The EPC contains an exceptions to patentability for: 

• inventions for which their commercial exploitation would be contrary to morality; 
• plant or animal varieties, or biological processes for their production;
• methods for treatment of the human or animal body by surgery or therapy; and
• diagnostic methods performed on the human or animal body.

These exceptions stand apart from the "non-invention" categories discussed below because a claim including any of these features is excluded, whereas mixed claims including a "non-invention" are permitted. This total exclusion can make protection of inventions bordering on the exceptions difficult and careful preparation of patent applications is required from the outset. These exceptions, particularly relating to medical treatments and surgery, are different to many other countries so care is needed to ensure applications are "European ready" when they originate from countries with more generous rules. 

Non-invention

The EPC defines the following categories as not being inventions:

• discoveries, scientific theories, and mathematical methods; 
• aesthetic creations; 
• schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; and
• presentations of information. 

As noted, claims with a mixture of features that are inside and outside of these categories are permitted. It is common to categorise features inside the categories as "non-technical" and those outside as "technical" and we will use that language for convenience. A claim is only completely excluded if it contains only non-technical features; for example "A method of making money by buying shares and selling them at a higher price." As soon as a claim includes one technical feature - "A method of making money by using a computer which performs a method of buying shares and selling them at a higher price." - the exclusion is avoided and the claim should be examined against the prior art. 

However, during examination only technical features are considered when assessing whether there is an inventive step over the prior art. Adding a trivial technical feature will not therefore help secure a granted patent. The inventive step must be in a technical area or put another way the claimed invention must provide a technical effect.

The definition of "technical effect" varies for each category and will be discussed in the future, but the key requirement is for an inventive step. Simply using known technology to implement a known non-technical method is not sufficient. In the above example, the implementation in a computer system would avoid the exclusion, but would (probably) not be inventive. It is often stated that a "further technical effect" must be provided beyond routine technical implementation. 

The exclusions often combine with the EPO's strict added matter objections to present difficulties securing grant of applications which originate from outside of EPO countries. The ability to define the technical effects required for an inventive step is entirely dependent on the content of the application as filed. After filing it is too late to add the detail and style required by the EPO. If there is insufficient basis it is often impossible to define a claim or associated technical effect to secure a granted claim. Drafting should therefore be tackled carefully to ensure the application is ready for the EPO from the outset and that the description and claims contain the content we may need to argue for the application in Europe. 

In our next article we will start to consider each of the categories in more detail. 

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.