Never underestimate the ‘industry’ requirement in patent applications

It is well known that for an invention to be patentable, it must be ‘new’, even if the concept of what is new is not fully clear. But if we move forward and ask about the other two patentability requirements that must be met for an invention to be granted a patent—inventive step and industrial applicability—others might scratch their noses and tilt their head.

For those who deal with patents, either by drafting them or examining them, novelty is not that much a difficult requirement to fulfil, while inventive step can be the tough one. As regards industrial applicability, well…it is often (seen as) the easy one. But is it?

According to the European Patent Convention, an invention shall be considered as susceptible to industrial application if it can be made or used in any kind of industry, including agriculture.

What does this exactly mean?

According to the Boards of Appeal of the EPO, product (devices, systems, apparatuses, substances, compositions) and processes (methods, uses) are objects susceptible to being applied in an industry, where industry is seen as “any activity that is carried out continuously, independently and for financial gain”. (source: “Case law” of the Boards of Appeal of the EPO, 10th Edition 2022).

With regard to methods, there are exceptions: surgery, therapeutic or diagnostic methods are not patentable. Since they are applied by a person, the application may differ depending on the professional, making some incompatible with an industrial application of those methods. However, products that are set to be used in those methods are possibly patentable.

Let’s look into some insightful examples of case law treated within technical boards of appeal at the EPO related to patent applications and patents involving this third and so often underestimated requirement of industrial applicability.

Laws of physics: what about the unknown ones? 

When we talk about laws of physics, we normally mean the known laws of physics. If an invention is described upon laws other than those already known, such laws must be described as well, to allow a skilled person to carry out the invention.

T541/96—Perpetual motion machine

The invention was directed to a system and method for making unstable radioactive heavy nucleus elements more stable. The system comprised a cathode (formed of a heavy radioactive element) and an anode, wherein an electric current applied between the cathode and the anode would cause nuclear decays of the heavy nucleuses producing nuclear fusion at low temperature. The invention intended to reduce heavy, radioactive nuclei to stable, less heavy ones by applying an electric field, thereby reversing radioactivity.

The appeal board in charge of the case not only confirmed that the refusal decision was correct but added another reason for it: the application didn’t fulfil the requirement of industrial applicability due to the lack of clear and complete description.

The invention was based on unknown laws of physics, while through the known ones, no skilled person would be able to carry out the invention and thus apply it in an industry. In this case, a very detailed explanation of these supposedly new laws of physics must have been done originally in the application, preferably based on experimental evidence. As it was, the description didn’t go beyond general statements and speculations. The appeal was dismissed.

T1336/13—Gravity engine

Similarly to the previous case, this patent application was considered as not being sufficiently clear and complete for a skilled person to carry it out. This conclusion has been based on vague explanations of an engine using no power but gravity, supposedly allowing the system to rotate by transforming the vertical direction of gravity into a rotating one. No input of energy or fuel was required to set the machine into a continuous motion while it would be possible to extract energy from it.

The application was refused on the grounds that the disclosure of such forces and energy transferrals wasn’t enough for a skilled person to carry out the invention, thus leading to an absence of possibility to apply such a machine in an industry.

Methods and uses for self-interest

A method or a use of a compound that will cause a desired effect on a human might be regarded as a therapy or simply a use that may fall within the exclusions of patentability but also might be out of the chances to be industrially applicable.

T144/83—Appetite suppressant

A patent application for a “Method and product for inducing anorexia” has been refused based on the ground that it was directed to a cosmetic process which wasn’t susceptible to be applied in an industry. The method included the intake of a drug by a human being which can be regarded as a therapeutic method and thus part of the exclusions to patentability.

The applicant appealed against the refusal decision, arguing that an improvement on the appearance of a person by reducing extra weight is not a medical treatment, but instead a cosmetic one. However, in cases of obesity, reducing weight is a treatment with medical purposes.

The Board of Appeal found the method patentable as a cosmetic treatment but the difference between a cosmetic treatment and a therapy isn’t that sharp. The board eventually allowed the application, but claims were directed to the use of the drug for a treatment. The refusal decision was set aside.

T74/93—Contraceptive method

A patent application directed to the use of a contraceptive compound applied in the form of a cream to the cervix of a woman, was regarded as not being industrially applicable because its use is a private, personal act.

The applicant appealed against the refusal of his application, alleging that the use of such contraceptive could be industrially applicable in the context of a paid service, for example, in the case of a prostitute who was charging the contraceptive as included in the price of the service offered to the client, or when a nurse applies it on a disabled woman who is unable to do it by herself. In both situations, the applicant claimed that the act pertained to an industry, even referring to the example of prostitution as the “oldest industry in the world”.

The Board of Appeal did not find this convincing. Even though agreeing that the prostitute’s profession can be seen as an industry, the application of the contraceptive composition to her cervix is not. The means the woman decides to use as a contraceptive is not industrially applicable. The board also stated that such a use could not be considered a therapeutic method, since it is directed to prevent pregnancy, and pregnancy is not a disease.

In relation to the argument of the nurse applying the contraceptive cream to a disabled woman, this was seen as satisfying  a woman’s wish rather than an industrial activity. The claims were eventually redrafted such and then directed to the compounds, rendering the patent permissible and the refusal was set aside.

T1165/97—Vaginal discharge

Under the title “Feminine Hygiene Device”, a patent application has been refused because a method for collecting a vaginal discharge does not meet the industrial application requirement. The reasons were also based on the above-described decision T74/93, referring to the private and personal sphere character of the actions and thus not industrially applicable. Even if the method was carried out by, for example, a nurse, it wouldn’t be patentable as it falls in the exclusions of methods of treatment.

In the appeal proceedings, the board in charge found that a method of placing a vaginal discharge collector, holding it in place, collecting discharge in the collector, retrieving it and disposing of the collector after a single use, can be considered susceptible of industrial application if these steps were carried out as a paid service and not exclusively dependent on the woman’s wish. In contrast to the previous example, the collection of a vaginal discharge can have a medical purpose and not be based on a woman’s decision only. Eventually, the refusal decision was set aside.

Industrial application is a requirement that often does not come alone. As shown in the examples, if a patent application is not clearly and completely described such that a skilled person is able to carry it out, then also its industrial application might be impaired. In other cases, especially related to beauty products or other compounds with clinical effects, if the application is directed to a method or even a use wherein its implementation depends on the actions of a person, either the user or a professional one, the industrial applicability of such methods or uses might not be fulfilled. In the first cases—insufficiency of disclosure—the application might not be susceptible of being recovered through amendments, as the applicant would have the need to add new matter in order to better describe the invention, and that’s not allowed. For the other cases, often by redrafting the claims, the application can still be brought into granting.

This is a co-published article, which was originally published in the World Intellectual Property Review (WIPR).