G - patentability CH3 Flashcards
- General remarks
“An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture”. “Industry” is understood in its broad sense as including any physical activity of “technical character” (see G‑I, 1), i.e. an activity which belongs to the useful or practical arts as distinct from the aesthetic arts; it does not necessarily imply the use of a machine or the manufacture of an article and could cover e.g. a process for dispersing fog or for converting energy from one form to another. Thus, Art. 57 excludes from patentability very few “inventions” which are not already excluded by the list in Art. 52(2) (see F‑II, 1). One further class of “invention” which would be excluded, however, would be articles or processes alleged to operate in a manner clearly contrary to well-established physical laws, e.g. a perpetual motion machine. An objection could arise under Art. 57 only in so far as the claim specifies the intended function or purpose of the invention, but if, say, a perpetual motion machine is claimed merely as an article having a particular specified construction, then an objection is made under Art. 83 (see F‑III, 3).
- Method of testing
Methods of testing generally are regarded as inventions susceptible of industrial application and therefore patentable if the test is applicable to the improvement or control of a product, apparatus or process which is itself susceptible of industrial application. In particular, the utilisation of test animals for test purposes in industry, e.g. for testing industrial products (for example for ascertaining the absence of pyrogenetic or allergic effects) or phenomena (for example for determining water or air pollution) would be patentable.
- Industrial application vs. exclusion under Art. 52(2)
“Susceptibility of industrial application” is not a requirement that overrides the restriction of Art. 52(2), e.g. an administrative method of stock control is not patentable, having regard to Art. 52(2)(c), even though it could be applied to the factory storeroom for spare parts. On the other hand, although an invention must be “susceptible of industrial application” and the description must indicate, where this is not apparent, the way in which the invention is thus susceptible (see F‑II, 4.9), the claims need not necessarily be restricted to the industrial application(s).
- Sequences and partial sequences of genes
In general it is required that the description of a European patent application must, where this is not self-evident, indicate the way in which the invention is capable of exploitation in industry. The invention claimed must have such a sound and concrete technical basis that the skilled person can recognise that its contribution to the art could lead to practical exploitation in industry (see T 898/05). In relation to sequences and partial sequences of genes, this general requirement is given specific form in that the industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application. A mere nucleic acid sequence without indication of a function is not a patentable invention (EU Dir. 98/44/EC, rec. 23). In cases where a sequence or partial sequence of a gene is used to produce a protein or a part of a protein, it is necessary to specify which protein or part of a protein is produced and what function this protein or part of a protein performs. Alternatively, when a nucleotide sequence is not used to produce a protein or part of a protein, the function to be indicated could e.g. be that the sequence exhibits a certain transcription promoter activity.
