With respect to patentability, Section 1 Para 1 German Patent Act states that "patents shall be granted to any inventions which are new, which are susceptible of industrial application and which involve an inventive step". The four elements mentioned in this provision (invention, novelty, industrial applicability and inventive step) require further explanation.
1. Invention - Patentable Subject Matter
The subject matter of a patent, the invention has not been clearly defined in the Patent Act. German courts have described a patentable invention as a teaching to solve a certain problem by specific means, while the core of this teaching must be of a technical character. The solution of a particular problem by technical means has to be described in patent claims.
There are two categories of patents. An object patent is granted if the respective invention directly relates to an object (eg a device or substance). The other category is a process patent where a certain method (manufacturing or application process) is subject matter of an invention.
An invention, however, is not patentable if it has a non-technical character (examples are stated in Section 1 para 2 Patent Act), if its publication or exploitation would be contrary to the ordre public or morality or if it relates to plant or animal varieties or essential biological processes. With respect to the exclusion of patentability of computer programs (as such) it has to be noted that they are protected under copyright law.
The invention is only new within the meaning of the Patent Act if it does not form a part of the state of the art. It has to be objectively new and may not have been brought to the attention of the public by any means. The relevant date to be considered is the so-called "priority date". This can be the day of filing of the application with the Patent Office or the day of a validly claimed priority application under the Paris Convention (if patent registration has already been applied for in another country). The Patent Act also provides for a novelty grace period if a patent application is filed within six months after disclosure of the invention and if the disclosure is the result of an evident abuse of a display at an international exhibition (as defined in Section 11 Patent Act).
3. Industrial Application
The invention has to be industrially. An invention is considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture (Section 5 para 1 Patent Act). An exception to industrial applicability applies only to medical or diagnostical processes for treatment of the human or animal body (Section 5 para 2 Patent Act).
4. Inventive Step
The requirement of the inventive step is defined by the Patent Act only in a negative fashion. An invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (Section 4 Patent Act). Relevant for this test is the state of the art and the knowledge of an average person skilled in the art at the priority date. The evaluation whether an invention involves an inventive step is one of the most difficult problems in practice and requires careful consideration.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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