Definition of Patentability of Inventions in European and Eurasian Patent Systems

Kurdyukova N.N., Candidate of Laws (Ph.D. in Law equivalent), Russian patent attorney

In order to decide whether to apply for registration of the invention, it is necessary to determine whether the invention is patentable. Before answering this question, two criteria need to be analyzed, namely whether the invention corresponds to the conditions of patentability, and also whether it refers to the list of non-patentable inventions.

Now I would like to dwell on these two criteria in detail on the example of how this issue is being addressed in the European and Eurasian regional patent systems.

1. Patentability conditions of the invention

The fundamental conditions for the patentability of the invention both the European and Eurasian patent systems determine identically. First, European and Eurasian patents are issued only for that invention, which is new, has an inventive step and is industrially applicable. However, the definition of the above three conditions of patentability is given in various normative acts: in the EPS directly in the European Patent Convention (Articles 54-57), and in the EAPC this definition is referred by the Eurasian Patent Convention to its Patent Regulations (Article 14 of the EAPC). Secondly, both patent systems recognize these three conditions of patentability as necessary and sufficient for the recognition of the invention to be capable of protection. Thirdly, according to the meaning of the EPC and the Patent Regulations to the EAPC, the three conditions for patentability mentioned are independent of each other. At the same time, since the invention is considered patentable only if all three of these conditions are simultaneously available, one can speak of their cumulative nature. Inconsistency of the invention, at least one of these conditions, does not allow to recognize it patentable.

Despite the fact that in EPC and in the Patent Instruction to the EAPC the condition of industrial applicability is given after the novelty and inventive level, in the practice of examination of applications, the assessment of industrial applicability is conducted, as a rule, first of all. This is because the study of the claimed invention with respect to this condition of patentability is the least laborious and easy to implement at the initial stage of the examination. Consequently, if the claimed invention obviously does not meet the conditions of industrial applicability, it is considered unjustified to waste time and effort in assessing its novelty and inventive level.

The evaluation of the novelty and inventive step of the invention is carried out in strict sequence: first, an element of novelty of the invention is evaluated; if the invention is recognized as new, the next step is to determine whether this novelty element has an inventive step.

Novelty. The concept of patent novelty consists of two elements: 1) from the concept of a given level of known ideas (the determining level) and 2) from some plus placed over this level (a certain excess). In European and Eurasian patent systems, the level from which novelty is recognized is largely determined in a similar way and can be very diverse. So, “known” is only what was known under certain conditions of place, time or persons. Therefore, the novelty, exceeding this given level, is relative.

For example, in accordance with Article 54 of the EPC, the invention is considered new if it is not known from the level of technology. In this case, the level of technology is understood to mean everything that has become public information by written or oral description, use, or in any other way prior to the filing date of the European patent application. The state of the art also includes the content of the applications in the initially filed version.

Similarly, in accordance with Rule 3 of the Patent Regulations to the EAPC, the invention is recognized as new if it is not part of the prior art. The prior art includes all information that has become publicly available in the world prior to the filing date of the application with the Eurasian Patent Office or, if priority is claimed, prior to the date of its priority.

As follows from the above definitions, the prior art includes everything that has become available to the public by any legal means prior to the filing date of the application. In other words, information about the prior art should be of a public nature. In order that these or other information could be considered publicly available, they should be legally presented to the public in such a way that anyone could get to know them, had the opportunity to obtain the necessary information. At the same time, publicly available information does not include information obtained secretly or privately by virtue of official duties, for example, in the course of experimental work.[1] When assessing the general availability of information it does not matter whether anyone actually knew this information and understood its essence. Thus, accessibility is objective, not related to the subjective nature of its perception. In order to consider this information publicly available, it is sufficient that it is presented in a way that would allow any person to become acquainted with it and understand its essence.

Kinds of information about the invention that can be considered publicly available, the Patent Instruction to the Eurasian Patent Convention does not define. However, based on the world practice, such species are supposed to: publication of the description of the invention; public speaking; public use of the invention. The most common type of information is any kind of publication in which the content of the invention is disclosed (books, articles, patent documentation, drawings, drawings, etc.). Publication of drawings or drawings also refers to information that may discredit the novelty of the invention. It is necessary that the drawings or drawings should be presented in such a way as to enable us to understand the essence of the invention without a description.

The novelty of the invention may be defamed by disclosure of information prior to the filing date of the application, therefore, European and Eurasian law contains provisions protecting the claimed inventions. Thus, according to Article 55 of the EPC, disclosure of the invention is not taken into account if it occurred no earlier than 6 months before the filing of the application for a European patent and was a direct or indirect result: the obvious abuse committed against the applicant or his predecessor; or the fact that the applicant or his predecessor placed the invention on official or officially recognized exhibitions on the basis of the Convention on International Exhibitions, which was signed on November 22, 1928 in Paris and revised for the last time on November 30, 1972.

Similarly, in accordance with Rule 3 (3) of the Patent Regulations to the EAPC, such disclosure of the information relating to the invention, which is made by the inventor himself, the applicant or any other person directly or indirectly received this information, is not recognized as an obstacle to the recognition of the patentability of the invention, provided that the information on the essence of the invention has been made public not earlier than six (6) months before the filing date of the Eurasian application or prior to the priority date, if it is requested. At the same time, the obligation to prove the circumstances of disclosure lies with the applicant. Thus, we observe similarities in how this problem is solved in both regional patent systems.

The inventive step in the Eurasian patent system or, similarly, the inventive activity in the European patent system, is one of the three conditions for the patentability of the invention.

In accordance with Rule 3 of the Patent Regulations to the EAPC, the invention has an inventive step, if it does not obviously follow from the prior art for a specialist. As it follows from this definition, the evaluation of the inventive step is made with respect to a person for whom the invention should not clearly follow from the prior art. Consequently, the inventive level is determined based on the prior art, the hypothetical figure of the expert and the criterion of evidence.

It follows from the foregoing that the prior art is the basis for determining novelty and inventive level. However, when evaluating an inventive step, prior applications are not included in the prior art unless they are published prior to the filing date of the application or prior to the priority date if it is requested. This restriction is due to the requirement of general availability at the filing date of the information to be used by a specialist in verifying the compliance of the invention with the requirement of an inventive step.

In the practice of protecting inventions, the criterion “inventive level” is the most difficult to assess and therefore most often challenged in cases involving protest against the legitimacy of granting patents for technical reasons.

In the European patent system, another term is used: “inventive activity”. However, there is no fundamental difference between the concepts “inventive step” and “inventive activity”. This conclusion allows us to make an analysis of Article 56 of the EPC, which discloses the concept of “inventive activity” as a condition of patentability: the invention is considered based on inventive activity, unless it follows clearly from the prior art for a specialist.

The “non-obviousness” of the invention in both patent systems is a criterion that is judged from the expert’s point of view. In essence, the introduction of a “specialist” in the establishment of the inventive level and inventive activity is a legal fiction similar to that of the “good father of the family (bonus pater familias)”, established in the world practice since Roman law. At the same time, despite the hypothetical nature of the specialist, he has very specific requirements: 1) from the point of view of his personal qualities, the specialist is educated and active, which means his ability to use his professional knowledge to the fullest; 2) from a professional point of view, this specialist has the usual knowledge in the field of technology in question; it is understood that he is aware of the problems and established opinions in this area.

The legal practice of both patent organizations has developed a certain attitude to the figure of a specialist – this is not a designer, but a user of the subject matter of the invention. He knows how to act in this area, but he cannot create inventions. In the literature it is noted that sometimes it is more appropriate to talk about a group of specialists than about one person, for example, when it concerns some advanced technologies.[2]. In detail, the question of a specialist is examined in the precedent norms of the European patent system. For example, in case T424 / 90, the Technical Appeals Chamber decided that in reality a semiconductor expert should consult a plasma specialist if his problem concerns the technical improvement of the device for generating ion plasma. In case T99 / 89, the Chamber also decided that a “competent expert” could mean a group of two or more experts from the relevant fields.

Thus, a technical solution created at the “junction” of two or more areas requires the participation of various relevant specialists. But this raises the question of how to formulate a general conclusion about the obviousness of the technical solution as a whole. Here we should use the science-based approach – “the perception of fact and evidence in the frontier sciences”[3].

The conventional person of a technician and everything connected with it allows us to present problems of patent law in a completely new light: in the interrelation of the latter with science problems, in particular, scientific and technical terminology[4].

From the above, it follows that the term “specialist” is inextricably linked with the concept of the field of technology. As a rule, a “field of technology” is understood to mean the field of technology that is encompassed by the claims. However, if the invention relates to several fields of technology, it is assumed that the skilled person should have knowledge in all of these areas. This provision in the practice of the European Patent Office is known as the concept of an “expert team”. For example, in laser technology, a specialist is a team of 3 experts – one expert in physics, electronics and chemistry, respectively.

When assessing the inventive level from the position of a specialist, the prior art should be taken in the entirety. This essentially distinguishes the content of this criterion of patentability from an assessment of the novelty of the invention, in which only one object can be contrasted, based on the concept of identity. You cannot demand from a specialist knowledge of all areas of technology the same. He has normal knowledge in the field to which the invention belongs, or in related fields, but he cannot know areas far from or at all unrelated to the subject.

The concept of the inventive level contains another criterion – “evidence”. The invention does not have an inventive step if the “expert” can implement it using the prior art’s professional knowledge by simply performing operations and a combination of means disclosed by this prior art. The inventive level is evaluated by examining the problem posed by the inventor and the tools that were used to solve this problem.

Along with the objective indicators of the inventive level considered, so-called “auxiliary criteria for estimating the inventive level” are widely used in world practice. In particular, in the legal practice of many European member countries of the EPC, as well as the United States and Canada, the following indirect criteria have been developed for the evaluation of the inventive level: the commercial success that accompanies the invention; complexity of the problem being solved and overcoming difficulties in the way of its solution; technical progress; solving a problem that for a long time could not be solved; overcoming skepticism in this field; a new unexpected result; set of licenses issued for this invention; high costs associated with research and development; imitation and counterfeiting by competitors; overcoming the complex procedure for obtaining a patent, obtaining parallel patents for this invention abroad, etc. Given the absence of a fundamental difference in the definition of the basic conditions for patentability in the European and Eurasian patent systems, one can expect that law enforcement Eurasian patent practice in assessing the inventive level will also follow this path.

Industrial applicability. In accordance with Article 57 of the EPC, the invention is considered industrially applicable if its subject can be manufactured or used in any industry, including agriculture. Rule 3 of the Patent Regulations to the Eurasian Patent Convention states that “the invention is industrially applicable if it can be used in industry, agriculture, health and other areas of human activity”. Thus, the concept of industrial applicability in the Instruction to the Eurasian Convention as compared to its definition in the EPC is broader, since it speaks about the use of the invention not only in any industry, but also in other areas of human activity, which favorably affects the completeness of patent coverage protection of inventions in EAPO.

The criterion of industrial applicability is closely related to the concept of using the invention. By “use”, based on world legal practice, is understood the operation of the invention or its manufacture. It is sufficient that the invention can be made, i.e. could acquire the form of a device or substance in order to be considered as meeting the criterion of industrial applicability. The invention can be used if it has properties that enable it to obtain the claimed technical effect.

One should not confuse the notion of “industrial applicability” with the concepts of “utility” or “technical progress.” The criterion of industrial applicability has nothing to do with the economic profitability of the invention. Despite this, the technical aspect is very important in assessing industrial applicability.

An important condition for assessing industrial applicability is the requirement to manufacture the invention. If the application describes only a theoretical idea and the result cannot be obtained, as in the case of the “perpetuum mobile”, then the hypothetical specialist cannot obtain the result described in the application. It is also possible that the result is purely accidental, and the inventor is not in a position to describe the method of obtaining it. There is no deterministic rule for obtaining this result. In this case, the invention also does not meet the criterion of industrial applicability.

In assessing industrial applicability, an important circumstance is the condition for implementing the invention by a “specialist”. This requirement should not be confused with the condition for the full disclosure of the invention in the description of the application. As a rule, disclosure is considered incomplete if the inventor does not disclose an element that he knows, but for some reason he considered it possible not to describe. In this case, the court may decide in favor of the validity of the patent if it proves that the invention can be reproduced by a person skilled in the art.

At the same time, according to a number of authors, if no one is able to reproduce the invention described in the application, then it can be said that the invention does not meet the criterion of industrial applicability[5].

Thus, if, despite the description and all the information contained in the application about the invention, the latter cannot be realized or the described result cannot be obtained, then it is considered that the invention does not meet the criterion of industrial applicability. It should also be noted that the idea of whether a particular group of inventions is industrially applicable has changed over time. Thus, for a long time in the member countries of the European Patent Convention they were not considered industrially applicable, according to the idea that the invention “for medical use” does not meet the condition of industrial applicability, does not take into account all aspects of this criterion, two categories of inventions, to the use of known substances for medical purposes, and inventions that relate to the use of a known drug under new indications. [6]. Currently, these categories of inventions are patentable in almost all developed countries, as well as in accordance with European and Eurasian regional patent law, which had a positive effect on patenting.

2. Non-patentable inventions

In order to obtain protection, the invention must be of a technical nature, i.e. must solve a technical problem and provide technical input to the level of technology [7]. The term “technical” is derived from the word “technique” (from the Greek techne – art, skill[8]) and, therefore, must correspond to the semantic content of this concept. In the Dictionary of Russian S.I. Ozhegov [9] are provided three definitions of the word “technique”: “1.The aggregate of the means of labor, knowledge and activity, serving to create material values (To master technology). 2. A set of techniques used in some business, skill (Technique of office work). 3. Machines, mechanical tools, devices (Repair of equipment) “.

Thus, formally for the recognition of an invention having a technical character, it is sufficient that the claim’s claim expressing its essence contains at least one technical feature. Such signs, unlike non-technical ones, are based on the use of the laws of nature or are due to the manifestation of these laws.

In accordance with paragraph 2 of Article 52 of the EPC are not considered to be inventions: a) discoveries, as well as scientific theories and mathematical methods; b) aesthetic creations (the results of artistic design); c) plans, rules and methods of intellectual activity, games or business activities, as well as computer programs; d) how to present information. It should be emphasized that these provisions exclude the patentability of objects and activities even when the application for a European patent concerns at least one of these subjects or one activity as such. According to clause 4 of this article, the methods of surgical or therapeutic treatment of the human or animal body and the diagnostic methods performed on the human and animal body are also not considered to be industrially applicable, unless the provision refers to products, in particular substances or mixtures, for use in one of these methods.

The authors of the article “Will the EPO issue patents for diagnostic methods?” – argue that the term “medical methods” is a legal fiction [10]. This statement is based on social and ethical assumptions about the possibility to guarantee medical workers free practice in their profession without the obstacles that inevitably arise when using patents. Diseases of people and animals should not be subject to commercial activity, because otherwise it will lead to the division of society into two groups: those who can afford the necessary treatment and those who cannot.

However, in practice, the EPO quite often retreats from the above provisions. Over time, the issue of the patentability of diagnostic methods was consistently resolved by the EPO’s appeals chambers, which created a wide range of precedent norms. Leading on this issue is the decision of the Technical Appeals Chamber in the case of T0385 / 86 Bruker Medical Technician[11], which contains the interpretation of the term “diagnostic method”. In accordance with this decision, the method, in order to be recognized as diagnostic, should consist of the following: first, the obtained data are examined; then the obtained data are compared with standard indicators; Further, the degree of deviation of the received data from standard indicators is determined; and finally, on the basis of the established degree of deviation, the clinical picture is determined.

Therefore, diagnostic methods, based on the results of which it is possible to determine which treatment course is necessary for the patient, are excluded from patentability. Methods that show only intermediate results, based on the meaning of Art. 52 (4) EPC are not generally recognized as diagnostic methods, even if they can be used to establish a diagnosis.

However, despite the fact that in the Brooker Medical Technician was given a restrictive interpretation of the concept of diagnostic methods in accordance with the meaning of paragraph 4 of Art. 52 EPC, this interpretation was not always followed by law enforcement practice. Later it was recognized that the method applied to a person or animal, can be patented in the event that the desired result can be achieved by a specialist without special medical knowledge and skills.

The EPC also mentions other exceptions to patentability, in the presence of which patents are not issued (Article 53 of the EPC). These include, in particular:

  1. a) invention, publication or use of inventions that are contrary to public order or good morals (the Convention contains a reservation that such use of the invention cannot be considered simply because it is prohibited in all or part of the Contracting States by law or administrative order);

(b) Plant varieties or breeds of animals, as well as predominantly biological methods for the removal of plants or animals (not applicable to microbiological methods and products obtained by these methods).

Thus, a number of results of a person’s creative activity are excluded by EPC standards from protection by European patents as inventions because they do not meet this requirement.

A list of objects that are not recognized as inventions exists also in the Eurasian patent system. It is contained in rule 3 of the Patent Regulations to the Eurasian Convention. It is much fuller than in the EPC, although it is not exhaustive. Inventions in EAPO are not recognized: scientific theories and mathematical methods; presentation of information; methods of organization and management of the economy; conventional symbols, timetables, rules; methods of performing mental operations; algorithms and programs for computers; topology of integrated microcircuits; projects and layout plans for structures, buildings, territories; solutions that deal only with the appearance of products aimed at satisfying aesthetic needs[12].

Thus, a number of results of a person’s creative activity are excluded by EPC standards from protection by European patents as inventions because they do not meet this requirement.

A list of objects that are not recognized as inventions exists also in the Eurasian patent system. It is contained in rule 3 of the Patent Regulations to the Eurasian Convention. It is much fuller than in the EPC, although it is not exhaustive. Inventions in EAPO are not recognized: scientific theories and mathematical methods; presentation of information; methods of organization and management of the economy; conventional symbols, timetables, rules; methods of performing mental operations; algorithms and programs for computers; topology of integrated microcircuits; projects and layout plans for structures, buildings, territories; solutions that deal only with the appearance of products aimed at satisfying aesthetic needs.

Eurasian patents are not issued for varieties of plants and breeds of animals, as well as for inventions, the commercial use of which must be prevented in order to protect public order and morality.

The exclusion from protection as inventions of scientific theories, mathematical methods, discoveries, which by their nature is an explanation or an assumption of the phenomena existing in nature and regularities, is explained by the fact that they cannot be directly applied in industry. At the same time, on the basis of scientific theory or discovery, as a rule, the most significant inventions are created. For example, the theory of semiconductor physics is not patentable, while new semiconductor devices and methods for their production are recognized as inventions.

Solutions that deal only with the appearance of the product, aimed at satisfying aesthetic needs, should be divided into two groups. The first group includes works that represent the so-called result of “pure art”, which by their nature and nature cannot be industrially applied. The second group includes artistic and design solutions that determine the appearance of products that are recognized as industrial designs. Unlike the products of the first group, industrial samples of the second group meet the condition of industrial applicability. At the same time, by its nature, the protection of such industrial designs is aimed at protecting the appearance of products, rather than the technical nature of the solution. Industrial designs of the second group are protected in accordance with special regulatory enactments. Due to the lack of a technical nature of the solution, these objects are excluded from protection as inventions by the EAPO patents. In general, we can state the significant progress of the Eurasian patent law in the definition of non-patentable inventions, in comparison with European patent law; their list is more complete and specific in determining their types. At the same time, the problem of harmonization of the national legislation of the EAPC Contracting States remains relevant.

According to paragraph 1 of Art. 52 EPC European patents must be issued for any invention that allows industrial use, which is new and contains an inventive step, and paragraph 2 of this article contains a list of objects that are not considered inventions. To patenting in the EPO are not allowed any inventions [13]. More specific requirements for patentable inventions are given in the Instruction to the EPC. Thus, Rule 27 (1) (a) requires that the technical field to which the invention refers is indicated in the description; Rule 27 (1) (c) requires in the description to consider the invention, as stated, in such terms that it is possible to understand the technical problem and its solution, and to establish any advantages of the invention with respect to the prior art. Finally, rule 29 (1) indicates that the claims should define the object of protection in terms of the technical features of the invention.

Thus, the EPC Instruction requires the invention to be in the field of engineering, solve a technical problem and have technical characteristics. In other words, the EPC Instruction introduces the technical condition of the invention, which implicitly represents the fourth criterion of the invention in addition to the requirements of Clause 1, Art. 52 EPC. This is underscored by the fact that in the “Guidelines for Examination in the EPO” [14]» (hereinafter referred to as the “Guidelines “) in Part IV, Chapter C, relating to patentability, paragraph 2.1 draws the expert’s attention to the fact that all exceptions to patentability are either abstract (discoveries, scientific theories, etc.), or non-technical (for example, the results of artistic design or presentation of information) character, whereas the invention in the sense of art. 52 (1) of the Convention should be both specific and technical. Paragraph 4.1 of the same part C of Chapter IV of the Guidelines indicates that industrial applicability is regarded as the ability to use in any industry, including agriculture; industry should be understood in a broad sense as including any physical activity of a “technical nature,” that is, an activity that belongs to useful or practical skills, in contrast to aesthetic ones. This activity should not necessarily involve the use of machinery or the production of products. Moreover, in paragraph 4.5 it is noted that the requirement of industrial applicability does not exceed the limitations of Art. 52 (2) EPC.

EPC does not define the concept of “invention”, but only indicates the exclusion of patentability. In the absence of an exact definition of the term “invention”, the terms “field of technology” and “state of the art” serve to indicate that the object considered in the application should not relate to the results of creativity in the field of theoretical science or the so-called fine arts. The word “technology” means the totality of machines, devices, tools, etc. in any branch of production, the aggregate of skills and techniques, as well as the totality of the means of human activity created for the implementation of the processes of production and maintenance of non-production needs substance. In addition, in technology materialized knowledge and production experience accumulated by humankind in the process of development of social production[15]. It can be added that the main purpose of technology is to facilitate and enhance the effectiveness of man’s labor efforts [16], то есть that is, in the case under consideration, technology is implied precisely in its broad meaning as a sphere of human activity, resulting in “targeted creatures,” and not “creation aimlessly beautiful”[17]».

EPC does not define the concept of “invention”, but only indicates the exclusion of patentability. In the absence of an exact definition of the term “invention”, the terms “field of technology” and “state of the art” serve to indicate that the object considered in the application should not relate to the results of creativity in the field of theoretical science or the so-called fine arts. The word “technology” means the totality of machines, devices, tools, etc. in any branch of production, the aggregate of skills and techniques, as well as the totality of the means of human activity created for the implementation of the processes of production and maintenance of non-production needs. substance. And in technology materialized knowledge and production experience accumulated by mankind in the process of development of social production. It can be added that the main purpose of technology is to facilitate and enhance the effectiveness of man’s labor efforts, that is, in the case under consideration, technology is implied precisely in its broad meaning as a sphere of human activity, resulting in “targeted creatures,” and not “creation aimlessly beautiful. “

An indication of the “technical problem” solved by the invention is similarly directed not at the indication of a particular industry, to which this problem belongs, but on limiting the object of the invention to problems solved in the field of “technical field” (in its broadest sense), and not theoretical sciences or fine arts. The same is actually directed to the requirement to characterize the invention with technical features (rather than theoretical or aesthetic concepts). Therefore, to require that the object of the invention belong to any new field of technology, referring to some new branch of production, this means over-tightening the criteria for patentability, especially since the practice of the EPO refutes such a rigid approach. Indeed, for example, EPO patents No. 0141633 (cl. A 23 L 1/187) on the composition of the pudding mixture and No. 0393361 (cl. A 21 D 13/08) are known for the multicomponent food product in which the recipes are claimed[18]. There is no mention of anything technical in them. Nevertheless, these objects do not fall under the exclusion from among the patentable objects because of their “non-technical”.

It is possible to point out the whole groups of the International Patent Classification, which also does not assume any technical nature of the claimed inventions, and where applications are regularly filed and patents are granted. For example, in the class A 63 F 3106, EPO patent No. 0222931 was granted for a set for burning dominoes with double-sided chips[19].

One of the problems widely discussed in theory and practice is the patentability of business methods. In accordance with Art. 52 (2) EPC, business methods cannot be patented. However, Art. 52 (3) of the Convention indicates that this provision applies to business methods as such. Therefore, it is noted in the literature that a method of a technical nature can be patented, even if the subject of the present invention includes a business method.[20]. Practice is also using this approach. For example, in the case of 2000 on the application for the invention “Pension Benefit System” was issued a decision on refusal to grant a patent for this invention [21]». The reason for this decision was the circumstance that this invention does not have a technical character and therefore is unpatentable[22]. The position of the EPO’s appeals chambers regarding the patenting of inventions containing business methods is as follows: “if the application contains the invention of the business method as such, it is unpatentable; In the case where the invention contains a technical method, or in other words is of a technical nature, but includes a business method, it is subject to patenting [23].

Guidelines for Examination of 2003 contains the following provisions on patenting business inventions containing inventions: the scheme for organizing commercial transactions will be non-patentable. However, if the invention describes a device or technical process for applying the circuit, this circuit and such device or technical process should be considered as an integral part of the examination. Guidelines for Examination of 2017[24] stated that only the features related to the technical implementation of the business method related to Brokering offers and demands can be identified as the features contributing to the technical character of the invention. As an example Guidelines for Examination of 2017 provides Brokering offers and demands inventions with following features: The business method steps are carried out by a computer; the current location information is received from GPS terminals.

The patenting of inventions containing business methods is still considered problematic, which is due to the lack of clarity in regulatory acts, despite the development of law and jurisprudence. On the one hand, the EPC unequivocally recognizes business methods as unpatentable, but then leaves out a loophole, allowing for patenting containing business methods of inventions, if they do not contain business methods as such. On the other hand, the European Patent Office recognizes that exceptions to patentability prevent the main task of the patent system – to encourage ingenuity. For this reason, the EPO tries to consolidate in normative acts and practice a plausible theory to overcome such exceptions.[25]. However, at present, the fact is the recognition of inventive inventions containing business methods patentable in Europe, which can be confirmed by a large number of patents already issued for such inventions[26]. In addition, a certain number of inventions containing trading methods are at the stage of patenting[27].

Thus, in the Eurasian and European patent systems, the technical condition of the invention has actually been introduced, as if the fourth criterion in addition to the requirements of Art. 6 EAPC and Cl. 52 EPC on novelty, inventive level and industrial applicability of the invention.

In case you have any questions or problems in the international registration of inventions, please contact us by e-mail: osnpatent@mail.ru or contact form on the site.

[1] See: Blinnikov VI, Grigoriev AN, Eremenko V.I. Eurasian patent legislation (commentary). – Russian Research Institute of Patent Information, 1998. – P. 14.

[2] See: Ustinova EA, Chelysheva O.V. The average specialist in European judicial practice. // Patents and licenses 2005. – No. 3. – P. 10.

[3] See: Science: problems and research (scientific discoveries and its perception). – Moscow: Science, 1971

[4] See: Ustinova EA, Chelysheva O.V. The average specialist in European judicial practice. // Patents and licenses. – 2005. – No. 3. – P. 12.

[5] See: Blinnikov VI, Grigoriev AN, Eremenko V.I. Eurasian patent legislation (commentary) – Russian. Research Institute of Patent Information, 1998. – P. 18.

[6] See: Chelysheva OV, Ustinova EA, Nazarova LS, Arkhangelskaya NV Features of patent law in chemistry, pharmaceutics, medicine. – Moscow: INC Rospatent, 1999. – P. 54

[7] See: Peregudova, Yu., “Technical Solution” as a criterion for a fundamentally patentable invention. // Intellectual Property. Industrial property. 2006. – No. 5.-C. 23.

[8] Technique // Soviet Encyclopedic Dictionary. – Moscow: Soviet Encyclopedia. 1987. – P. 1329.

[9] Technique// Ozhegov SI Dictionary of the Russian language. – M .: Russian language, 1986.

[10] See: Schreiber, Ina Bourout, Gaёlle Nargolwalla, Cyra Will the EPO grant patents for diagnostic methods? //Managing Intellectual Property; 2005. World IP Contacts, P. 6-9.

[11] T 0385/86 – 3.4.1 Decision dated 25 September 1987 Bruker Medizintechnik (Title of the invention: “Verfahren zur nichtinvasiven Ermittlung von Messwerten innerhalb eines lebenden Körpers”)//Official Journal 1988. – P. 308

[12] Exceptions to the protection of developed computer programs, as such, does not mean the exclusion from protection of inventions related to the use of computers. The actual contribution to the state of the art, which is the subject of the claims, must be determined by the totality of (technical and non-technical) features.

[13] See: Revinsky, O., Views on the Legal Protection of Inventions Related to Software, in the European Patent Office. // Intellectual Property. Industrial property. – 2001-? 12. – P. 13-15

[14] Implementing regulations to the Convention on the grant of European patents.// Official Journal of the EPO. 1995. 9 et seq.

[15] See.: Dictionary of foreign words. – M .: Russian language, 1990. – P. 507.

[16] See.: Soviet encyclopedic dictionary. – Moscow: Soviet Encyclopedia, 1987. – P. 1329.

[17] See.: Lutz van Raden. Die Informatishe Taube. Uberlegungen zur Patentfahigkeit information bezogener Erfindungen.// GRUR 1995. – No 7. – S. 451-458.

[18] EP0393361- Foodstuff comprising several components with a protective layer, process and composition for its preparation – SOCIETE DES PRODUITS NESTLE S.A. -<http://www.epoline.org/portal/public/registerplus> (date of last visit 27.07.2007)

[19] See.: Patentability of methods of doing business// EPO Press Release, 18.08.2000 <http://www.european-patent-office.org/news/pressrel/2000> (date of last visit 23.12.2006г.).

[20] See: Patentability of methods of doing business// EPO Press Release, 18.08.2000 <http://www.european-patent-office.org/news/pressrel/2000> (date of last visit 23.12.2006).

[21] Decision of the Technical Board of Appeal 3.5.1. of 8 September 2000 “Improved pension benefits system” Case number T 0931/95-3.5.1, 2000- < http://legal.european-patent-office.org/dg3/pdf/t950931eu1.pdf> > (date of last visit 23.12.2006г.).

[22] Erwin J Basinski Business Method Patents in Europe – A Saussurean Explanation , 2001. <http://www.mofo.com/news/general.cfm?MCatID=7694&concentrationID=&ID=141&Type=5> (date of last visit 23.12.2006г.).

[23] Anatoli Kalpakidou Business Method Patents. Should they survive in Europe? // International Journal of Law and Information Technology. 2005. – Vol. 13. – No 2 – P. 250.

[24] See: 5.4.2.2 Example 2- Guidelines for Examination in the European Patent Office – last edition of November 2017 – https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_vii_5_4_2_2.htm (date of last visit 29.08.2018)

[25] See.: Jeffry R. Kuester “Congress Takes Another Aim at Business Method Patents, Patent Strategy&Management, 2000. <http://kuesterlaw.com/hr5364.htm> (date of last visit – 23.12.2006.).

[26] See.: Arnould Engelfiert “Examples of Granted European Business Method Patents, Ius Mentis <http://www.iusmentis.com/patents/businessmethods/epoexamples/> (date of last visit – 23.05.2006).

[27] See.: Keith Beresford European patents for software , E-commerce and business model inventions//World Patent Information. – 2001. – Issue No 3. – Volume 23. – P. 253-263.