Patentability

Patentability is the aptitude of an invention to be protected by a patent. It requires that the claimed subject matter constitute an invention, that it fall under no statutory exclusion and that it meet the three substantive conditions: novelty, inventive step and industrial application. The rules of patentability are found in Articles L. 611-10 et seq. of the French Intellectual Property Code and Articles 52 et seq. of the European Patent Convention, available on Légifrance and on the website of the European Patent Office.

The conditions of patentability

First, novelty: the invention must not be comprised in the state of the art, meaning everything made available to the public before the filing or priority date. Second, inventive step: the invention must not follow in an obvious manner from the state of the art for the person skilled in the art. Third, industrial application: the subject matter of the invention must be capable of being made or used in any kind of industry, including agriculture. These conditions are cumulative and are assessed at the filing date.

The exclusions from patentability

Certain subject matter is not regarded as an invention: discoveries, scientific theories, mathematical methods, aesthetic creations, schemes, rules and methods for intellectual or business activities, computer programs and presentations of information, considered as such. Other subject matter constitutes an invention but is excluded for reasons of legal policy: inventions whose commercial exploitation would be contrary to human dignity, public policy or morality, methods of surgical or therapeutic treatment and diagnostic methods practised on the human or animal body, plant varieties and animal breeds, and essentially biological processes for the production of plants or animals.

Key points

In practice, patentability is assessed first during examination by the office, then, in greater depth, in opposition proceedings or a nullity action, where lack of patentability is the main ground of revocation. A prior patentability analysis, based on a prior art search, avoids pointless filings and supports the drafting of resistant claims. The firm advises and litigates on these questions, as presented on the page patent nullity action.