Patent: what conditions for patentability?

Written by Isabelle Chéry and Gaëlle Calvary
 
The patent (P for Patent) is a method of protecting intellectual creations (IP for Intellectual Property). The protection of an intellectual creation allows its owner to obtain an exclusive right of use and therefore to prohibit a third party from using his invention without his/her authorisation. Some creations do not require any formalities to be protected: the protection arises from the very fact of their creation. Other creations, such as technical inventions, must be formally registered in order to be the subject of a property title enforceable against third parties. Spontaneous protection or the ownership title provides its holder a competitive advantage. As a reminder, in order to give a patent owner a head start, a patent application is not published until 18 months after filing.
This article specifies the conditions of patentability for filing and obtaining a patent. It has been validated by Quentin Bronchart, Industrial Property Attorney at Hautier IP, for which we are warmly thankful.
 

What can be protected?

Ideas are free. Only the concrete implementation of the creation can be protected, so only the means by which these ideas are put into practice can be protected.
There are several intellectual property rights (IP for Intellectual Property) depending on the nature of the intellectual creation.
Technical creations, i.e., technical inventions, can generate industrial property by being protected by patent.

What are the conditions for patent patentability?

To be patentable, an invention must meet the following three criteria:

• The invention must be new:

An invention is considered new if it is not included in the state of the art, i.e., it is not fully described in a document prior to the date of patent filing. In some countries, notably France, novelty must be absolute. Thus, if the inventor discloses his invention before filing the patent application, the invention is no longer protectable. In other countries, such as the USA, there is a grace period of one year during which the inventor who is at the origin of the disclosure of his invention can file a patent application without his own disclosure being enforceable.

With regard to the French filing, the state of the art includes what has been made available to the public before the filing date of the patent application by means of a written description (publication, patent applications of all countries filed before the said patent application and published on that date) or orally (conference, congress, etc.). There is also a hidden state of the art but which can also be enforced on the basis of novelty: patent applications not yet published at the time of filing of the said patent application (because within the 18-month publication period) but filed before this filing date and that designate France, directly or via a Patent Cooperation Treaty (PCT) application or a European patent application.

For a European patent application, the same rule applies: European patent applications or Euro-PCT applications [1], not yet published on the filing date of the said European patent application but filed before that filing date, are opposable on the grounds of novelty.
This type of application, which is opposable, in France and in Europe, to the novelty of the said patent application even though it was only published after the filing date of the said application, is generally and subsequently referred to as “intercalary applications”.
Furthermore, novelty must be assessed objectively, document by document, claim by claim, prior art by prior art. Each claim, taking into account any claims on which it depends, must be new, i.e., no other document must describe it in full. Otherwise, the claim is not reputed as new.

• The invention must be the result of an inventive step:

An invention is considered to involve an inventive step if, according to a person skilled in the art, it does not follow in any obvious way from the state of the art. The person skilled in the art is the equivalent of an implementer in the field of invention. He is not capable of inventing anything. He is a fictional character with ordinary qualities and normal knowledge of the trade.
For France and Europe, the state of the art for the inventive step only includes what has been made available to the public before the filing date of the patent application by a written description (publication, patent applications for all countries filed before the said patent application and published at that date) or orally (conference, congress, etc.).
Interlocutory applications are not enforceable as an inventive step in France and Europe. This rule is not valid, for example, for an application filed in the USA where any interleaved application will be taken into account to assess the inventive step.
In order to assess the inventive step, one must return to the conditions of the state of the art before filing. This state of the art is essentially embodied in the prior art documents cited by the patent offices against the patent application. A theoretical overview is required. In particular, it is assumed that the person skilled in the art is familiar with the cited prior art documents; it is then necessary to determine whether the person skilled in the art would have obviously arrived at the subject matter claimed in the said application, by considering the prior art as a whole, and in particular by combining the teachings of the prior art documents. If the prior art suggests or reveals to the person skilled in the art how to achieve the claimed object, then the claimed object does not involve an inventive step.

Considering now what has been established above in relation to the assessment of novelty and putting these considerations in perspective with what has just been said in relation to the inventive step, the steps for assessing the inventive step can be stated as follows:   

• Determine the features of the claimed subject matter that distinguish it from the disclosure of a prior art document chosen as the closest prior art,
• Determine the technical effect of the previously identified distinguishing features,
• In view of this technical effect, formulate a technical problem that the claimed object solves over the closest prior art,
• Evaluate whether the person skilled in the art would have been able to solve the technical problem previously formulated in the claimed object by considering the prior art as a whole.
• Note that in addition to the prior art, the person skilled in the art can use his general knowledge in the technical field considered.
• A counter-example is the eraser pen. It is not inventive because, the pencil and the eraser being known, it is obvious, for the man of the trade (i.e., the pencil manufacturer), to juxtapose a pencil and an eraser to write and erase with the same tool.
• In research laboratories, teams of researchers are often at the crossroads of different technical fields enabling them to produce inventions; the multidisciplinary origin of an invention is likely to reinforce its inventive height.

 
________________________________________
1] A Euro-PCT application is a PCT application that has entered the European phase by paying the relevant filing fee and providing a translation of the PCT application into one of the three official languages of the European Patent Office, if the PCT application is in another language.

• The invention must be industrially applicable:

An invention is considered industrially applicable if its subject matter can be made or used in any kind of industry including agriculture.

 

The following are excluded from patentability

• Discoveries:

For example, the simple discovery of an element of the human body in its natural environment, including the sequence, even partial, of a gene. Thus, DNA sequences are not patentable. They must be deposited in databases and are thus accessible to the public domain. Patent protection may nevertheless be possible for products or processes derived from such data if they meet the patentability criteria mentioned above. For example, the European Patent Office states that a simple DNA sequence without any indication of a function cannot constitute a patentable invention. On the other hand, if even a partial sequence of a gene is used to produce a protein, even in part, specifying that part of the protein produced as well as the function it performs, then the protein or part of the protein is patentable but not the DNA sequence itself.
Another example is the discovery of a previously unknown property of a known material: there is no technical effect, it is a simple discovery. However, the application of this material to exploit this new property could be patented. For example, when a known material for which a previously unknown fireproof property has been discovered is used to insulate a building. This material/new property combination applied to this application could be patentable. Similarly, if an element of nature is discovered that will not be patentable as such, but has a technical effect such as a microbial function, then the technical effect of the element could be patented for that function. For all these examples mentioned above, this means that third parties could use the discovered protein, material or element if the use does not implement the patented technical effect, i.e., in the examples, the protein for the patented function, the material for its flame retardant properties or the element for its microbial function. Thus, someone else could use the same element for another technical effect without being dependent on the anti-microbial patent because the technical effect is patented and not the discovered element.

• Scientific theories, i.e., the theoretical explanation of a phenomenon, are not patentable. For example, the theory of gravity is not patentable. The European Patent Office (EPO) also cites the theory of semi-conductivity as an example: the theory is not patentable but new semiconductor devices and their manufacturing processes would be patentable.

• Mathematical methods such as a method of solving an equation is excluded from patentability. To be patentable, the mathematical method must at least involve a technical means to be implemented.

• Plans, principles and methods used in the performance of intellectual activities are not patentable:

•    For example, a language learning method.
•    In the field of games, a manual or a rule of the game (protected by copyright) is not patentable. In the field of economic activities: according to the EPO, “objects or activities of a financial, commercial, administrative or organisational nature fall into the category of plans, principles and methods in the field of economic activities that, as such, are excluded from patentability”. Note that this exclusion applies to Europe. In the USA, it is possible, although more difficult than before, to patent business methods.

• Computer programs: The EPO clarifies that the exclusion does not apply to computer programs that produce an “additional technical effect” when run on a computer. “Additional technical effect” means a technical effect which goes beyond the “normal“ physical interactions between the program (software) and the computer (hardware) on which it runs. It is thus necessary to identify the technical problem that is solved by this software solution (the algorithms). In this case, the patent protects the software algorithms, the algorithm being a finite and unambiguous sequence of operations or instructions for solving a problem or obtaining a result. An example of a “software” patent is a process (the algorithm), translated into software development, for managing the consumption of paraffin in the two tanks on either side of an aircraft so that it is always stable during its flight. In the case of a computer program, the patent will therefore protect the process by which the technical effect is achieved and the code will not be mentioned in the patent. The patent will be kept confidential. It will be filed with the Agency for the Protection of Programs in order to obtain proof of the creation, the software is under copyright.

• Information presentations are not patentable. The EPO states that “presentation of information” means the transmission of information to a user. It covers both the cognitive content of the information presented and the manner in which it is presented [...]. The term is not limited to visual information. It also covers other forms of presentation, for example audio or haptic information. However, it does not extend to the technical means used to generate such information presentations.”

Exceptions to patentability:

 

Inventions whose commercial exploitation would be contrary to human dignity, public order and morality, such as a coffin with a stake designed to be driven into the body of the deceased when the coffin is closed to ensure that the deceased is dead, or an anti-personnel mine.
Methods of surgical or therapeutic treatment of the human or animal body and diagnostic methods applied to the human or animal body. The European Patent Office lists as unpatentable a process for making a stent outside the human body, which requires a surgical step to take the measurements.
There are also exclusions and exceptions for biotechnological inventions including

• The human body or the mere discovery of one of its elements (including the total or partial sequence of a gene).
• Animal breeds and essentially biological processes for obtaining plants or animals. For example, the EPO states that “transgenic plants and technically induced mutants are patentable, unlike the products of conventional breeding processes. Thus, a process consisting only of crossing the parental lines of plants or animals and selecting the desired progeny is not patentable.”

Contact us!

If one of your research results seems innovative, declare it immediately to your employer (D for invention declaration). We will assist you in your efforts in conjunction with an industrial property firm to study the patentability and draft the patent (the basics; our advice for drafting claims). We will help you in its valuation. Benefits are multiple, for example job creation but also financial returns for you as the inventor.
 
Contact: drive.pi@grenoble-inp.fr