Article 52 EPC: Patentable inventions

Text of Article 52 EPC

In plain English

Article 52(1) sets four conditions. There must be an invention, and it must be new (Article 54), involve an inventive step (Article 56) and be susceptible of industrial application (Article 57). Article 53 then removes some inventions that pass all four tests.

Article 52(2) lists things that are not inventions at all: discoveries, scientific theories and mathematical methods, aesthetic creations, schemes and methods for mental acts, games and doing business, computer programs, and presentations of information. The words “in particular” mean the list is illustrative, not closed.

Article 52(3) is what makes the list workable: the exclusion bites only on those things “as such”. The EPO applies it in two steps. First, does the claim have technical character? Any method that uses technical means, and any device such as a computer or storage medium, passes this hurdle (Guidelines G-II, 3.6, citing T 258/03 and G 3/08). Second, when assessing inventive step, only the features that contribute to that technical character count (T 641/00, COMVIK).

So most software, fintech and AI applications are not refused under Article 52 itself. They are refused for lack of inventive step once the business or mathematical content has been set aside. A claim to “a computer-implemented method of pricing an insurance policy” is an invention; whether it is patentable depends on whether something other than the pricing idea solves a technical problem in a non-obvious way.

A computer program claimed on its own is not excluded if, when run, it produces a “further technical effect” beyond the normal physical interaction between software and hardware (T 1173/97). The Guidelines give the control of a technical process and the internal functioning of the computer or its interfaces as examples. A program that is merely faster than an older program serving the same non-technical purpose does not, on that basis alone, have a further technical effect.

Key decisions

• T 1173/97 (Computer program product/IBM) : A computer program product is not excluded if, when run on a computer, it produces a further technical effect going beyond the normal physical interactions between program and computer.
• T 641/00 (Two identities/COMVIK) : For a mix of technical and non-technical features, inventive step is assessed on the features that contribute to technical character; a non-technical aim may appear in the problem as a constraint.
• T 258/03 (Auction method/HITACHI) : A method involving technical means is an invention under Article 52(1), but steps that change a business scheme to avoid a technical problem, rather than solve it, do not contribute to technical character.
• G 3/08 (Programs for computers) : The President's referral on computer programs was held inadmissible. The Guidelines still rely on its reasoning that a program needs “further technical considerations”, beyond finding an algorithm, to have technical character.
• G 1/19 (Pedestrian simulation) : A computer-implemented simulation can solve a technical problem by producing a technical effect beyond its implementation on a computer; being based on technical principles is not enough on its own.

Common objections

Subject matter excluded “as such”

Raised against claims to a program, a business method or a set of rules with no technical means. Claiming the same idea as a computer-implemented method, a system or a storage medium removes the Article 52 objection, but only moves the argument to inventive step.

No technical contribution

The examiner sets the non-technical features aside, writes them into the problem as a requirement given to the skilled person, and finds the remaining implementation obvious. The answer is a concrete technical effect that the description supports, such as reduced memory use, lower network load or control of a physical process.

Mathematical method

An algorithm in the abstract is excluded. Tie it to a specific technical purpose or to an implementation adapted to the internal workings of the computer (Guidelines G-II, 3.3).

Drafting and prosecution tips

• State the technical problem and the technical effect of each key feature in the description. Business advantages alone will not carry inventive step, and effects you did not describe are hard to rely on later.
• For AI and machine-learning inventions, describe the technical purpose (for example classifying sensor signals to control a device) and the specific architecture, training data or implementation choices that serve it.
• Give a method claim, a system claim and a computer program or medium claim, but keep one independent claim per category to satisfy Rule 43(2).
• Avoid claim language that only states a commercial outcome. A feature defined by what it achieves for the business will usually be discarded under COMVIK.