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Article 2 b

number

submitter

recommendation

text

25

Rocard

+

b) "technical contribution", also called "invention", means a contribution to a field of technology.

49

Mayer

-

(ba) Software makes a technical contribution in the case of the digital administration, processing and representation of data in so far as it directly makes use of the application of controllable natural forces for the immediate production of the result.

57 = 62 = 63

Mastenbroek and Lichtenberger; Kudrycka and Zwiefka; Bertinotti

++

An "invention" in the sense of patent law is a contribution to the state of the art in a field of technology. The contribution is the set of features by which the scope of the patent claim as a whole is claimed to differ from the prior art. The contribution must be a technical one, i.e. it must comprise technical features and belong to a field of technology. Without a technical contribution, there is no patentable subject matter and no invention. The technical contribution must fulfill the conditions for patentability. In particular, the technical contribution must be novel and not obvious to a person skilled in the art.

58

Szejna

-

"technical contribution" means an activity which changes the state of the art, which is essentially new and not obvious. The technical contribution shall be assessed by consideration of the difference between the state of the art and the state after consideration of the scope of the patent claim, which must comprise technical features, that is, applied to material systems such as structures and materials and materials, substances and energy, as well as their manufacture and processing, irrespective of whether or not these are accompanied by non-technical features.

59

Lichtenberger and Frassoni

+

"technical contribution" means a new way and non obvious for a person skilled in the state of the art to use forces of nature to solve a problem in a technical field ;

60

Ortega

++

(b) 'technical contribution', also called 'invention', means a contribution in a field of technology. The technical character of the contribution is one of the four requirements for patentability. Additionally, to deserve a patent, the technical contribution has to be new, non-obvious, and susceptible of industrial application. The use of natural forces to control physical effects beyond the digital representation of information belongs to a field of technology. The processing, handling, and presentation of information do not belong to a field of technology, even where technical devices are employed for such purposes;

61

Kauppi

++

(b) "technical contribution", also called "invention", means a contribution to the state of the art in a technical field. The technical character of the contribution is one of the four requirements for patentability. Additionally, to deserve a patent, the technical contribution has to be new, non-obvious, and susceptible of industrial application. The use of natural forces to control physical effects beyond the digital representation of information belongs to a technical field. The processing, handling, and presentation of information do not belong to a technical field, even where technical devices are employed for such purposes. The method of data processing by using a computer, network or other programmable apparatus is not considered to belong to a field of technology.

64

McCarthy

+

(b) "technical contribution" means the application of a new process using physical forces in an inventive and non-obvious way, subject to the following provisos: / - The process may require a computation using a computer, but the normal physical processes of a computer cannot be part of the "technical contribution": a new process using physical forces separate from all computation is required. / - The process may perform communication with computers or people, but the physical processes of a pre-existing communication apparatus cannot be part of the "technical contribution": a new process using physical forces separate from any pre-existing communication apparatus is required.

65

Gauz├Ęs

-

b) "technical contribution" means a solution to a problem in a field of technology.

49 states that "software" can "make a technical contribution". That's not true. If one has a computer-controlled washing machine, the (automated) washing process could contain a technical contribution, but the software steering it can't.

59 has good intentions, but on the downside it mixes patentability requirements.

61 is a reprise of the first reading definition of technical contribution, and is very good, although it puts a lot of different things in one amendment (the second part with positive and negative definitions of "field of technology" is also tabled as separate amendments by other members).

60 is the same as 61, except that the former does not contain the last sentence of 61.

57 = 62 = 63 clarifies the relation between "invention", "patentable subject matter", "technical contribution" and "field of technology" (!TRIPs). It is complementary to several of the other definitions in this article. It uses the phrase "field of technology".

58 is quite complex and suffers from the problem that "the patent claim as a whole must comprise technical features" (which can be fulfilled by mentioning a computer somewhere).

64 also takes a completely new approach to technical contribution and while it contains good ideas and is a definite improvement over the Council version, it is quite complex and not very clear. It also mixes patentability requirements to some extent (technical contribution and novelty).

65 takes it to the other extreme and is extremely simple. On the downside, it does not identify any relation between the invention and the contribution, and can be interpreted as meaning that only the problem must be in a field of technology. 25, while remaining very succinct, fixes those problems.

Article 10 a (new)

| number | submitter | recommendation | text | | 205 | Lehne | - | A technical contribution is present if technical considerations contribute to the solution of a technical problem. A technical contribution is not present if the subject matter claimed in the patent solely consists of discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for performing mental acts, playing games or doing business, programs for computers, or presentations of information, without limitation to new, non-obvious and technical subject matter that can be made or used in any kind of industry. |

This amendment does not really clarify or limit anything. The "technical considerations" are easily fulfilled, because the European Patent Office considers e.g. that if automating a known process provides surprising economy of scale benefits, it is based on considerations of how a computer works.

The second sentence can be circumvented by merely adding the word "computer" to the claims, as the claim then no longer solely consists of "discoveries, ... , programs for computers, ...". It is even dangerous to a certain extent in that it suggests that the exclusion of those subject matters as such in the EPC simply means they may not appear on their own in the claims. Such a limitation would merely require a rewording of the claims, and not constitute any practical limitation whatsoever.

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