The Future of the Requirement for an Invention: Inherent Patentability as a Pre- and Post-Patent Determinant

The purpose of this chapter is to develop the reflections contained in the conclusion of my recent book (The Requirement for an Invention in Patent Law (Oxford: OUP, 2010)). Specifically, it is to propose a method for applying the requirement for an invention under Article 52(1) of the EPC, including a definition of the invention itself. I argue that while the proposal does not solve all definitional and methodological issues regarding that requirement, it is nonetheless justified on four central grounds. First, it reorients the European patent system around its central aim of supporting industrial growth. Second, it explains much historical and contemporary patent jurisprudence. Third, it improves the system’s theoretical and doctrinal coherence by anchoring the system to its social function, and reducing the risk of doctrinal fragmentation and disproportionate patent protection. And fourth, it supports an appropriate vision of “Europeanization”, and is informed substantially by the history and philosophy of technology and science. Finally, it is not without support in EPO cases. In developing my proposal I draw substantially on UK jurisprudence, not because I believe that the UK courts have all the answers, but because it is the jurisprudence with which I am most familiar, and which has most influenced my thinking and understanding. A central claim which I make is that the requirement for an invention has an important role to play in contemporary patent law, including beyond the threshold point of determining inherent patentability itself. In making this claim I am trying to extend the focus of current debates by suggesting that we ought to be asking not only Is X an invention?, but also What constitutes X as an invention?. And the reason is simply that patents are granted for inventions, and the scope of protection which they confer defined with reference to the inventions for which they are granted. Among other things, this means that it is our conception of an individual subject matter as an invention that determines the scope of protection which its patent confers. Put differently, and to use the language of contract law, our conception of subject matter as inventions is central to ensuring that the consideration proffered for a patent is not only sufficient, but also adequate. Thus, inherent patentability is both a pre- and post-patent determinant.