What is an invention?

The term "invention" has never been defined in any Patent Law. The German approach was that the term inventions implies only "technical inventions". According to rumors a German Patent Attorney who wanted to have clarification on the point of technicality filed a patent application claiming a process to breed a red pigeon. His application was refused and he went all the way to the highest German Court. The "Bundesgerichtshof" finally defined in addition to other criteria decided in earlier cases that the technical teaching of an invention must always lead to a reproducable result:

„Technisch ist eine Lehre zum planmäßigen Handeln unter Einsatz beherrschbarer Naturkräfte zur Erreichung eines kausal übersehbaren Erfolgs, der ohne Zwischenschaltung menschlicher Verstandestätigkeit die unmittelbare Folge des Einsatzes beherrschbarer Naturkräfte ist.“

A technical teaching is [constituted by] systematically applied actions by making use of controllable natural forces to achieve a result with clear cause and effect, without intermediary activity by the human mind, as the direct consequence of the use of controllable forces of nature.

BGH GRUR 1969, 672 - Rote Taube

In case of a pure breeding method the result is not guaranteed, as the result may have different outcome each time due to the individual genetic information that varies even within a the same race of an animal. Apart from identical twins we all know that siblings can look very different.

Interestingly today the same result, once you have got a red pigeon, could be achieved in a reproducible way by cloning or trans-genetic methods. Actually this definition proved to be timeless as it is still valid 27 years later after the appearance of "Dolly". In contrast to breeding (sexual replication) cloning is the perfect example of the use of controllable natural forces with a clear cause and effect.

The definition of technicality and all the other decisions that preceded and succeeded the "Red Pigeon" may demonstrate why the fathers of the European Patent Convention, coming from countries with different experience and case law did not touch the subject of defining in the EPC what an invention shall include. They rather choose to give a list of exclusions to keep the door open. Thus the definition what an invention could include is defined by the boundaries what it must not comprise.

Therefore it is not true, as some critical voices never end to promulgate that the European Patent Office is permanently granting patents by breaching the law. The law maker (the diplomatic conference) deliberately entrusted the European Patent Office to grant patents on any invention as long as the subject matter of an invention does not go beyond the given limitations in Art. 52 and Art. 53.

Historical Interpretation

As pointed out in T 154/04 the application of Art. 52 (1) EPS presents a problem of construction as there was no legal or commonly accepted definition of the term "invention" at the time of conclusion of the European Patent Convention in 1973. Unlike the German Patent Office and the German Patent Courts the EPO had not developped any such explicit definition ever since. The second paragraph of Article 52 EPC is merely a negative, non-exhaustive list of what should not be regarded as an invention within the meaning of Article 52 (1) EPC. In T 154/04 the Board of Appeal took the effort to look in the historical documention (Traveaux préperatoires) to analyse the legaslative history. The intention was clearly to ensure that anything that was a patentable invention [in the member states] before under conventional patentability criteria should remain patentable under the European Patent Convention. No paradigm shift was intented.

Article 52 - Patentable inventions (EPC 2000)

  1. European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application.

  2. The following in particular shall not be regarded as inventions within the meaning of paragraph 1:

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

  3. Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject‑matter or activities as such.


    (emphasis added)

This Article is a revised text of the European Patent Convention which entered into force on 13 December 2007 for all the then 32 EPC contracting states. This version is called EPC 2000 as the diplomatic conference that amended some of the Articles of the EPC agreed to this version on 29 November 2000. The original European Patent Convention version is called EPC 1973. THE EPC 1973 did not yet comprise the words "in all fields of technology". These words were added in order to bring the wording of the European Patent Convention in line with the first sentence of Article 27 (1) of the TRIPS agreement.

As Article 52 (1) refers to an invention in all fields of technology the term "invention" is construed for all subject-matter and activities having a "technical character". As novelty is mentioned among involving an inventive step and being susceptible to industrial application as further prerequisites in a statutory interpretation of Article 52 (1) the EPO (= examining divisions and boards of appeal) uses the term "invention" as a general and absolute requirement for patentability irrespectively if the invention implies novelty in relation to prior art or not. This must be distinguished from involving a technical contribution to the prior art as part of the assessment if the invention implies an inventive step, which is a relative requirement, as it is always assessed in relation to prior art. (T 0154/04). As laymen tend to interpret the term "invention" to imply at least novelty misapprehensions in the public are inevitable.

Usual order of examination of an invention

Basically inventions (in the meaning of the EPC) are examined in the following order:

  1. Does the invention have technical character?
  2. Is the invention excluded for reasons mentioned in Article 52 (2) and (3)?
  3. Is the invention new, does the invention imply an inventive step (as a technical contribution to prior art) and is it susceptible to industrial application?
  4. Are other requirements (formalities) of the EPC fulfilled?