JuriInvstep0505En

Article 3 (replacements and additions)

number

submitter

recommendation

text

85

Ortega

+

[deleted]

86 (replacement for 3) = 29 (3.1 (new))

Lichtenberger and Frassoni; Rocard

+

Member States shall ensure that inventions are patentable irrespective of whether or not they use computerised means and that, vice versa, no one may patent algorithms, software or information processing methods, whether or not they are combined with technical mechanisms.

87

Kauppi

+

In order to be patentable, a computer-implemented invention must be susceptible of industrial application and make a technical contribution. The technical contribution must be new and involve an inventive step.

88 = 89

Kudrycka and Zwiefka; Bertinotti

++

In order to be patentable, a computer-aided invention must make a technical contribution. The technical contribution must be new and involve an inventive step. If there is no technical contribution, there is no patentable subject matter, and no invention.

90

Szejna

+

In order to be patentable, a computer-implemented invention must make a technical contribution and be suitable for practical, including industrial, application, it must be new and change the current state of the art.

91

Lichtenberger, Frassoni

++

In order to be patentable, a computer-controlled invention must be new, susceptible of industrial application and involve an inventive step. The inventive step shall be assessed by consideration of the difference between all of the technical features included in the scope of the patent claim considered as a whole and the state of the art, irrespective of whether or not such features are accompanied by non-technical features.

30

Rocard

++

In order to be patentable, a computer-controlled invention must, in addition to being technical in nature, be new, susceptible of industrial application and involve an inventive step. The inventive step shall be assessed by consideration of the difference between the overall technical features in the patent claim and the state of the art, irrespective of whether or not such features are accompanied by non-technical features.

85 deletes the "technical contribution in the inventive step" article by the Council, which contradicted its own article 2(b) that says the technical contribution must be new and non-obvious instead of the other way round.

86 = 29 clarifies that data processing is not patentable and that conversely the use of data processing does not make technical inventions unpatentable.

87 uses a compromise wording which marries the EPO practice and Council text to the principle of the EP's first reading, at the expense of some clarity (the amendment does not make it entirely clear that the invention and technical contribution are equivalent). This problem is solved by 88 = 89.

90 also links technical contribution and invention, and sums up the other requirements of patentability.

91 is a reprise of a first reading amendment and makes it very clear only technical features can be used to pass the other patentability requirements (such as novelty and inventive step), similarly to 90. 30 is also quite similar to this one.

Recital 12

| number | submitter | recommendation | text | | 212 | Ortega | + | [deleted] | | 213 | Szejna | - | All inventions must meet the requirement of making a technical contribution to the state of the art. The technical contribution must be new and not obvious to specialists in the given technical field. If it makes no technical contribution, the solution is not patentable, because there is no inventive step.| | 214 | Harbour | - | In order to be patentable, inventions in general and inventions which can be realised by a computer program (computer implemented inventions) in particular must be susceptible of industrial application, new and involve an inventive step. In order to involve an inventive step, computer implemented inventions must in addition make a new technical contribution to the state of the art. | | 215 = 217 | Kudrycka and Zwiefka; Bertinotti | ++ | It is a condition for inventions in general that they must make a technical contribution to the state of the art. The technical contribution must be new and not obvious to the person skilled in the art. If there is no technical contribution, there is no patentable subject matter and no invention. | | 11 = 216 | Rocard; Lichtenberger and Frassoni | + | It is a condition for inventions in general that, in order to involve an inventive step, they should show a significant difference between the overall technical characteristics in the patent claim and the state of the art. |

The original Council recital also codifies the EPO's "technical contribution in the inventive step" doctrine.

212 rightfully deletes the recital.

213 mixes technical contribution and inventive step

215 = 217 replace it with the general conditions of patentability and stress that technical character is the basic test for whether or not something is an invention.

214 only adds some extra rhetoric to the Council recital, but keeps the original meaning.

11 = 216 focus only on the inventive step condition and in this way elegantly remove the mixing of the "invention" and "inventive step" test from the Council version.

Recital 13

| number | submitter | recommendation | text | | 12 = 220 = 221 = 222 = 223 = 224 = 225 | Rocard; Harbour; Lichtenberger and Frassoni; Ortega; Kauppi; Kudrycka and Zwiefka; Bertinotti | ++| Accordingly, an innovation that does not make a technical contribution to the state of the art is not an invention within the meaning of patent law. | | 219 | Szenja | o | If a computer-implemented invention is not technical in nature, then it does not satisfy the criterion of being an inventive step and therefore shall not be patentable. |

219 is equivalent to the Council version and removes the misleading remarks from that text, but keeps the confusion between "technical character" (= statutory subject matter) and "inventive step".

The other amendments all fix this.

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