Industrial Property Law

Under Article L. 611-10, 1° of the Intellectual Property Code, patentable subject matter consists of a new invention involving an inventive step that is capable of industrial application. Although there is no legal definition of invention, case law considers that it presupposes the existence of technical features, i.e. that it consists of technical processes enabling a technical result to be obtai …

Concept

Under Article L. 611-10, 1° of the Intellectual Property Code, patentable subject matter consists of a new invention involving an inventive step that is capable of industrial application. Although there is no legal definition of invention, case law considers that it presupposes the existence of technical features, i.e. that it consists of technical processes enabling a technical result to be obtained . Patentability relates to the means, not the result obtained, so that a patent claim which merely states a result or principles must be annulled . The technical features of an invention are assessed in relation to the patent claim as a whole . A combination of technical and non-technical features, such as the application of a method in the performance of intellectual activities, can be patented . However, a method does not acquire technical aspect simply by virtue of the fact that it uses technical means .

The Law of 2 January 1968  distinguished between product, process, new application of known processes and new combination of known processes. The wording was removed by the 1978 law, but these categories are still of practical importance in assessing the scope of patent protection, and are still used in certain provisions . They each constitute an autonomous category: a patent covering a manufacturing process does not cover the product obtained by this process, even if the application filed for registration of the patent claims both .

The invention of a product refers to an object, a product or a device. It may consist, in particular, of a pharmaceutical product, such as the active chemical compound of a medication . It is distinct from a process invention, which is characterized by a technical solution, i.e. a succession of concrete processes , or the function of a tool enabling a product to be obtained. A process invention is protected independently of the tool used, unless the patent covers a process whose practical and effective implementation is conceived and described only with the aid of a special tool designed to implement it .

An application patent refers to a claim relating to a new application of known methods. Patent protection covers the new use of a known product or process . Article L. 611-11 of the Intellectual Property Code thus provides for the patentability of a new application of an active medicinal ingredient in the context of the implementation of surgical or therapeutic treatment methods for humans or animals, and diagnostic methods applied to humans or animals (paragraphs 4 and 5).

The novel combination of known means may constitute a patentable invention , provided that the means employed all contribute to obtaining an overall result  to which no prior use from the ground up is claimed  and which is distinct from the mere addition of said means . This is the case for a patent describing a novel combination of a transparent plastic bag used for in vitro cultures and a special device for sealing the bag . On the other hand, a claim whose features are no more than a juxtaposition of processes known to a person skilled in the art  and where the combination does not produce a “surprising synergistic effect”  is not patentable. This is the case when the means play the proper and distinct role they had in existing prior uses  and simultaneously produce the effects that were already theirs, without obtaining a different and new result  or without the applicant justifying having increased their effectiveness or more advantageously arranged the economy of use or production . A court may not dismiss a claim for infringement by a patent owner on the grounds that the patent does not actually implement a new combination, without investigating whether the means described in the patent have already been previously combined and arranged in the same way to form the same overall structure .

A selection invention is an invention realized by selecting individual elements, subsets or limited ranges of values not explicitly mentioned in the prior art, within a larger, known set or range of values . The novelty of a selection invention lies in the novelty of the selected element in an individualized form. Accordingly, the courts have recognized the novelty of a chemical compound selected from a family, the qualities of which were demonstrated through the implementation and experimentation of the product, which alone enable its properties to be accurately known, this industrial result being specific to that new product .

Cass. com., 10 November 2009, LawLex202200001038JBJ; CA Paris, 22 November 2019,  LawLex202200009211JBJ; also see PCT-EPO Guidelines (Nov. 2016) i.e. specify the technical field to which the invention relates (Rule 42 (1)(a), concern a technical problem, Rule 42(1)(c) and possess the technical features that can be stated in the form of claims defining the subject matter of the application for which protection is sought (Rule 43(1)) (cf. F-IV, 2.1).

Cass. com, 10 November 2009, LawLex202200001038JBJ.

Cass. com. 23 November 1965, LawLex202200009864JBJ.

Before the introduction of the inventive step requirement by the Law of 2 January 1968, case law distinguished “new application” from “new use”, which was not patentable: See e.g. Cass. com., 21 April 1969, LawLex202200001085JBJ; Cass. com., 4 November 1968, LawLex202200001141JBJ, relating to the use of granules in baking and pastry-making. The courts have since abandoned this distinction.

Cass. com. 24 January 1972, LawLex202200001818JBJ; Cass. com. 6 March 1990, LawLex202200001144JBJ, for claims dependent on the first claim to which they are attached, which refer to devices forming part of a new combination.

Cass. com. 13 June 1966, LawLex202200002119JBJ, specifying that the invention must not be a simple juxtaposition of known means.

Cass. com. 23 May 1973, LawLex202200001820JB.

Cass. com. 15th March 1994, LawLex202200001785JBJ.

Cass. com. 26 October 1970, LawLex202200001138JBJ.

Cass. com. 20 May 2014, LawLex202200001351JBJ; Cass. com. 19 November 2002, LawLex202200001143JBJ.

Cass. com. 30 May 2018, LawLex202200009174JBJ.

Cass. com. 4 October 1994, LawLex202200001813JBJ; Cass. com. 4 December 1978, LawLex202200001022JBJ.

CA Paris, 5 June 2009, LawLex202200009865JBJ; CA Paris, 21 May 2019, LawLex202200009845JBJ.

Cass. com. 4 October 1994, LawLex202200001813JBJ.

Cass. com. 4 December 1978, LawLex202200001022JBJ.

Cass. com. 7 June 1968, LawLex202200001224JBJ.

Cass. com. 17 July 1967, LawLex202200001231JBJ.

CA Paris, 22 November 2019, LawLex202200009211JB.

CA Paris, 10 January 2003, LawLex202200001245JBJ, which specifies that the fact that a process designed to obtain administrative and legal information in the field of economic activities uses telecommunications networks for non-technical purposes does not make it of a technical nature.

Law No 68-1 of 2 January 1968 on patents, OJ of 3 January 1968.

See, for example, Articles L. 611-10, 4°, R. 612-18, paragraph 1, or R. 612-19 of the Intellectual Property Code.

Case C‑414/11 Daiichi Sankyo Co. Ltd v Sanofi-Aventis Deutschland GmbH, Judgment of 18 July 2013, LawLex202300007295JBJ.

Industrial Property Law

237. Concept

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237. Concept

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