HC 6 EIPLAT 10-02-2011 Pz17 'activities as such'--> art. 52(3) EPC computer programs as such cannot be patented.

Development in caselaw: (beginning focus on) further technical effect: program that merely runs on computer, computer controls another machine. Algorithms cannot be patented, but further technical issue is to be adressed: patent is not impossible. (later) 'any hardware approach': art. 52 is not applicable to a computer program, as long as you claim this cp in connection with some hardware. Has taken away effect art. 52 on cp's, has effect on examination of inventiveness of cp's.When evaluating this a distinction is made between patentable subject matters (technical solutions) and the algorithm. Art. 52(1) requirements: 1. new (society gives an exclusive right, and in return receives new technology) 2. involves an inventive step and, 3. is susceptible of industrial application. Requirement of novelty (art. 54 EPC): not part of the state-of-the-art (anything that is available to the public: cannot be patented). What about earlier patent applications filed before,but published after the date of filing? Patent office will not publish immediately, 18 months after filing patent. Suppose two people file a patent for the same patent innovation shortly after eachother. 18 months haven't lapsed yet before second applications. Is second applications novel? novelty is not destroyed: it was not yet in the public domain, not available, only to the patent office. This could lead to the situation where two patents on the same thing would be granted: undesirable--> exception rule: it is not novel anymore, ficticious state-of-the-art, so you won't get two patents. It also depends on for what countries you want protection: if no overlap, then they can 'live' next to each other. Novelty is determined on filing-date. Novel on the day you filed, then you are okay. 'Hop-Dobber'-case: (method for pouring concrete under water, was used on building site) defense based on novelty: this patent shouldn't have been granted, because the invention wasn't novel on the filing date. Declare patent invalid! Patent offices can make mistakes. However, you should substantiate this statement. Method had been used before filing the patent on a building site. Court: yes, novelty destroyed. it had been used for a municipality and a report about the building activities had been issued including the method of pouring concrete. Employee could tell about how this method was used. Building site was open to the public: there was no identity check needed, no confidentiality contract needed to enter the site. Invention had been used in public, before the filing date: patent invalid! Patents important in industries: chemical 1. new chemical substances: 1.1. not sufficient to know the formula: patent is about knowledge, you should be able to use the formula not only know the formula. Mere availability of formula in public is not

enough to destroy novelty. 1.2. Must be able to make the substance. 2. If person is able to discover and reproduce without undue burden, then it is state-of-the-art. 2.1. Person must be able to discover its composition 2.2. person must be able to reproduce it without undue burden (Packard/LS) 2.3. Reason to look irrelevant. PSITA: person skilled in the art NB: product available to the public: what if the chemical composition can be found out by analysis? 2. is the answer. Does a combination of known elements belong to the state-of-the-art? If from completely different disciplines? PSITA will not think of combining them, so if someone comes up with the idea novel. If obvious, or within same discipline, or if anyone could come up with the idea novel. Confidential disclosure: does not destroy novelty. Are there other non prejudicial disclosures? If you display an invention on an international exhibition, within six months you can still apply for a patent. II. Inventive step 1. When does an invention involve an inventive step? (art. 56 EPC) 2. What is a person skilled in the art? This person, when confronted with a technical problem that is not completely described, will still be able to solve this problem. Everything that falls outside what this person can solve, than it is novel. It might however not be inventive. 3. What about earlier European patent applications published after the filing of the patent in question? Does not occur often. Example Installation for brushing cattle: is it inventive? Car wash Cow wash PSITA: will also have thought of it. We would also have come up with it. However, a patent was granted: invention has a number of characteristics that are not directly evident from the picture. Apparently in a car wash, a car is put into a carrier, the car wash always knows where the car is. This is different from a cow wash. Hinges distinguish it from a car wash. Test inventiveness problem-solution approach: mental exercise to see if an invention is inventive. Problem with this approach: judging while we already saw the solution. To judge, they have to go back to the time when a solution for the problem was not existent. Find out prior-art that is relevant Determine technical problem Objective: was the solution inventive? (PSITA) weakness: very formal, inventiveness not always easy to determine (not able to go back to the time when a solution did not exist). 1. Is combining prior art inventive? If different discplines. 2. Can inventiveness be derived from the way of arriving at an invention? Yes. 3. Are there other secondary factors pointing towards or away from inventiveness? Those secondary factors could prove inventiveness: the fact that the problem has long been

bothering people and has finally been solved: inventive! III.Industrial application What is industrial application? Art. 57 EPC

Other requirements unity of invention: describe one invention, not two in a filing for a patent. sufficiency of disclosure: in patent application describe invention, but (from perspective patentee) drawback that invention is published and competitors can read about it. Describe in that case as obscure as possible! From societal perspective: society sees patent system as 'quid pro quo'. Good thing that competitors can read about the invention! Basically this requirement say: if you file, you have to describe the invention in such a way that a PSITA can do what the patent says: to apply the invention. So a PSITA should not invent a way to be able to apply the patent innovation. Art. 60(1) UK Patent Act: 'Process' also extends to the product. Why is a product patent more interesting? Patent to more products under (a) than under , with a process patent you have the problem you have to prove that that process was used. Product patent is easier to prove.