2.1. Introduction

Art. 52(2) EPC lists subject-matter or activities not regarded as inventions within the meaning of Art. 52(1) EPC. It states that in particular the following shall not be regarded as inventions within the meaning of paragraph 1; (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information.

Seeing as Art. 52(2), (3) EPC is a limitation to the general entitlement to patent protection laid down in Art. 52(1) EPC, it is not a matter of judicial discretion, but must have a clear legal basis in the EPC (cf. T 154/04, OJ 2008, 46; see also G 2/12, OJ 2016, A28).

According to T 930/05, the mere fact that the list of items not to be regarded as inventions in accordance with Art. 52(2) EPC 1973 was non-exhaustive, ("in particular"), indicated that there was a common criterion for exclusion which these items shared and which could serve as the basis for possible additions to the list. The enumeration of typical non-inventions in Art. 52(2) EPC 1973 covered subjects whose common feature was a lack of technical character. The catalogue of exclusions under Art. 52(2) EPC 1973, with its reference to Art. 52(1) EPC 1973, was to be regarded as a negative definition of the concept of invention.

The verification that claimed subject-matter is an invention within the meaning of Art. 52(1) EPC 1973 is in principle a prerequisite for the examination with respect to novelty, inventive step and industrial application since these latter requirements are defined only for inventions (cf Art. 54(1), 56, and 57 EPC 1973) (see T 258/03, OJ 2004, 575; see also T 154/04, OJ 2008, 46).

Art. 52(3) EPC states that paragraph (2) shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such.

The case law clearly shows that this list of "excluded" subject-matter should not be given too broad a scope of application; Art. 52(3) EPC is a bar to a broad interpretation of Art. 52(2) EPC (G 2/12 and G 2/13, OJ 2016, A28 and A29; T 154/04).

In T 154/04 (OJ 2008, 46) the board stated that the enumeration of typical non-inventions in Art. 52(2) EPC 1973 was merely a negative, non-exhaustive list of what should not be regarded as an invention within the meaning of Art. 52(1) EPC 1973. It was the clear intention of the contracting states that this list of "excluded" subject matter should not be given too broad a scope of application. Thus Art. 52(3) EPC 1973 was introduced as a bar to such a broad interpretation of Art. 52(2) EPC 1973. By referring explicitly to the "patentability of the subject-matter or activities", paragraph 3 actually enshrined the entitlement to patent protection for the non-inventions enumerated in paragraph 2 – albeit restricting this entitlement by excluding patentability "to the extent to which the European patent application or European patent relates to such subject matter or activities as such". That no paradigm shift was intended may also be seen from the fact that e.g. Switzerland as a contracting state considered it unnecessary ("überflüssig") to include the contents of Art. 52(2) and (3) EPC 1973 in the national regulations when harmonising them with the EPC 1973 (see "Botschaft des Bundesrates an die Bundesversammlung über drei Patentübereinkommen und die Änderung des Patentgesetzes", 76.021, 24 March 1976, page 67).

Further, the board held that "technical character" was an implicit requisite of an "invention" within the meaning of Art. 52(1) EPC 1973 (requirement of "technicality"). Art. 52(2) EPC 1973 did not exclude from patentability any subject matter or activity having technical character, even if linked to items listed in this provision since these items are only excluded "as such" (Art. 52(3) EPC 1973). In examining the patentability of an invention in respect of a claim, the claim had to be construed to determine the technical features of the invention, i.e. the features which contribute to the technical character of the invention. These principles had indeed a clear and consistent basis in the EPC and in the case law of the boards of appeal and the Enlarged Board of Appeal, in particular (see also G 3/08, OJ 2011, 10; T 931/95, OJ 2001, 441; T 914/02; T 2383/10).

For further information on the technical character of the invention, see in this chapter I.A.1.1. "Technical character of an invention".

The issue of inventions with technical and non-technical subject-matter of an invention (mixed inventions) is analysed in detail in sub-chapter "Treatment of technical and non-technical features", within the chapter I.D.9. "Assessment of inventive step".

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