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Case Law of the Boards of Appeal

 
 
1.1. General issues

Art. 57 EPC (the wording has not been changed in the revised EPC) provides that "An invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture". This Article defines and explains the nature of the requirement in Art. 52(1) EPC that the subject-matter has to be "susceptible of industrial application". In particular, this Article makes it quite clear that, under the Convention, agriculture is a kind of industry, and that agricultural methods are therefore, in general, methods which are susceptible of industrial application (T 116/85, OJ 1989, 13). Regarding the amendments to Art. 52(1) EPC in the course of the revision of the EPC, see Chapter I.A.1 "Patent protection for technical inventions".

In T 144/83 (OJ 1986, 301) the board stated that under Art. 57 EPC 1973 an invention was to be considered as susceptible of industrial application if it could be made or used in any kind of industry. Enterprises in the cosmetic field ­ such as cosmetic salons and beauty parlours ­ were part of industry within the meaning of Art. 57 EPC 1973, since the notion of "industry" implied that an activity was carried out continuously, independently and for financial gain. One board had already decided that the professional use of such inventions in a cosmetic salon was an industrial application within the meaning of Art. 57 EPC 1973. In T 36/83 (OJ 1986, 295) the board also found that the professional use of the invention in a beauty parlour was an industrial application within the meaning of Art. 57 EPC 1973.

In T 204/93 the board held that commercial use excluded from patentability under Art. 52(2)(c) and (3) EPC 1973 (in so far as it was not construed as a method for doing business) was a feature which might be understood to fall within the requirement that an invention had to be susceptible of industrial application (Art. 52(1) EPC 1973), i.e. that it could be made or used in any kind of industry (Art. 57 EPC 1973); reference was made in particular to the German word "gewerblich" in that provision of the Convention. The board noted that it was not disputed that computer programs could be exploited commercially. The exclusions from patentability defined in Art. 52(2) and (3) EPC 1973 did not in any way refer to the requirement in Art. 52(1) EPC 1973 of "industrial application" but to the requirement in that Article that the subject-matter claimed had to be an "invention". The exclusions in Art. 52(2) and (3) EPC 1973 were generally understood to share the common feature that the excluded matters lacked technicality but not that they could not be made or used, e.g. traded.

In T 953/94 the board stated that, as the Convention showed (Art. 52(1) EPC 1973), the requirement (defined in Art. 52(2) and (3) EPC 1973) of claimed subject­matter being an "invention" was distinct from the requirement (defined in Art. 57 EPC 1973) of the claimed invention being "susceptible of industrial application". Even though the former requirement might, cum grano salis, be equated with a requirement for a "technical" contribution, this was not the same as a requirement for "industrial" applicability; at least in this context, the terms "technical" and "industrial" were not synonyms. In Art. 57 EPC 1973, the meaning of "industrial" was evidently intended to cover commercial applications; this was made clear, for instance, by the German version ("gewerblich"). In the context of Art. 52(2) EPC 1973, this was clearly not the case for the meaning of "technical". This was because, in the context of "controlling a [...] process", the adjective "industrial" should, other than in the context of Art. 57 EPC 1973, be understood to relate only to technical processes usually occurring in "industry" (this latter term in its present context being understood in the narrower sense of what in German would be called "Industrie") and thus not as including "commercial", or even "financial", applications.

In T 541/96 the board noted that according to Art. 52(1) EPC 1973 a European patent could be granted for an invention which was, inter alia, susceptible of industrial application. This concept was related to the obligation on an applicant to give a sufficient description of the invention, as required by Art. 83 EPC 1973. An invention or an application for a patent for an alleged invention which would not comply with the generally accepted laws of physics would be incompatible with the requirements of Art. 57 and 83 EPC 1973 because it could not be used and therefore lacked industrial application. The description would moreover be insufficient to the extent that the applicant would not be able to describe how it could be made to work.

The board went on to observe that the Convention did not prevent the patentability of "revolutionary" inventions. However, Art. 83 EPC 1973 made the amount of information required for a sufficient disclosure of an invention somewhat dependent on the actual "nature" of the invention. If the latter lay in a well-known technical field and was based on generally accepted theories, the description did not need to comprise many specific technical details which would anyway be implicit to a skilled person. However, if the invention seemed, at least at first, to offend against the generally accepted laws of physics and established theories, the disclosure should be detailed enough to prove to a skilled person conversant with mainstream science and technology that the invention was indeed feasible (i.e. susceptible of industrial application). This implied, inter alia, the provision of all the data which the skilled person would need to carry out the claimed invention, since such a person, not being able to derive such data from any generally accepted theory, could not be expected to implement the teaching of the invention just by trial and error.

In the case at issue, the gist of the invention consisted in inducing nuclear fusion between light nuclei and heavy unstable nuclei at low temperature by means of an electric field. The appellant had provided neither experimental evidence nor any firm theoretical basis which would enable the skilled person to assess the viability of the invention; the description was essentially based on general statements and speculations which were not apt to provide a clear and exhaustive technical teaching, Thus, it was irrelevant to consider whether the fusion reactions referred to in the description might be theoretically possible, or whether they might indeed occur under certain conditions.

In T 718/96 the board ruled that, although disclosure objections could be raised under Art. 57 EPC 1973, on the grounds that an invention which could not be carried out was not susceptible of industrial application, they should rather be based either on Art. 83 or on Art. 100(b) EPC 1973, which specifically related to the performability of inventions.

In T 18/09 the board noted that the close inter-relationship between Art. 83 and 57 EPC was already addressed in previous decisions (see inter alia T 898/05). Both provisions related to the obligation of an applicant to give a sufficient description of the invention. In respect of Art. 83 EPC, established case law of the boards of appeal stated that a patent could only be objected to for lack of sufficiency of disclosure if there were serious doubts, substantiated by verifiable facts (see T 19/90, OJ 1990, 476). For the board, it would not be justified and unfair to set a different standard of proof in respect of Art. 57 EPC.

In T 1450/07 the board noted that the information in the application as filed should make plausible the identity of the claimed compound. Thus, the compound could be attributed to a known family of molecules on the basis of a comparison between its primary structure and that of molecules known in the art. Then, its putative functions could be disclosed. Experimental evidence was not necessarily needed. A number of reasonable assumptions could be made by taking into account the known functions of other family members as well as, for example and not exclusively, by taking into account the distribution of the claimed compound in the body. The treatments therein mentioned were in relation to the function plausibly attributed to the molecule. Post published evidence backing up these assumptions was always welcome. In fact, the more information the better, and the quality of the information was also fundamental. The board pointed out that each case had to be evaluated on its own merits. The board decided in the case at issue that the requirement of industrial applicability was fulfilled.