Definición de creatividad

In the US, there is a distinction between inherently patentable and inherently unpatentable technical subject matter.⁶²⁹ Conversely in Europe, this distinction has not tended to appear, as the EPO has long considered inherent patentability generously, as long as it is for a technical invention.⁶³⁰ In Europe, technical subject matter refers to

625 Guidelines for Examination in the European Patent Office, Revised edition, September 2013. Part G, Chapter II, 3.1.

626 Ibid.

627 Paterson, G. The European Patent System: The Law and Practice of the European Patent Convention.

London: Sweet & Maxwell, 2001 at 413.

628 Ibid.

629 Pila, J. “Isolated Human Genes: The Patent Equivalent of a Non-Copyrightable Sound Recording” in Law Quarterly Review (forthcoming) 2014.

630 See e. g. T 22/85, OJ 1990, 12; T 154/04, OJ 2008, 46

163 subject matter that is the instrumental and observable outcome of any purposive human action on the physical world.⁶³¹ This broad understanding of technical subject matter is sufficiently generous to sustain the patenting of isolated human genes and is also consistent with entrenched EPO case law and legislation in this area.⁶³² It is submitted that the requirement of an inventor showing an invention is ‘technical’ is a policy lever to encourage innovation.

A reading of Article 52(1) which defines “invention” alongside the exclusionary provisions found in Articles 52(2) and (3) by the EPO Boards of Appeal suggests that an invention is technical when a technical effect is accomplished by the invention or if technical considerations are needed to carry out the invention.⁶³³ This means that

‘technical character’ is essential to the concept of ‘invention’ when discussing patentable subject matter. Even though European jurisprudence shows that patent protection is limited to a technical invention,⁶³⁴ Sir Robin Jacob maintains that

“technical” is a fuzzy concept: “what is ‘technical’ (a test often asked) is an easy question to ask but not to answer.”⁶³⁵ As a result, it is up to judges to draw the line between what is technical and what is not.

631 See G 0002/07 (Broccoli/PLANT BIOSCIENCE) of 9.12.10 and G1/08 BROCCOLI &

TOMATOES/Essentially biological processes [2011] EPOR 27 (Tomatoes 1). These are two important decisions that the Enlarged Board of Appeal of the European Patent Office (EBoA) recently issued relating to patenting essentially biological processes for the production of plants and animals. The cases were combined and in December 2010, the EBoA held that methods for the traditional breeding of plants and animals did not amount to technical processes and are therefore unpatentable. The EBoA decided that claims directed at any non-microbiological processes for the sexual crossing of the whole genome of plants are considered to be ‘essentially biological.’

632 See Article 3(2) of EU Directive 98/44/EC on the Legal Protection of Biotechnology Inventions:

“Biological material which is isolated from its natural environment or produce by means of a technical process may be the subject of an invention even if it previously occurred in nature” as well as HOWARD FLOREY/Relaxin [1995] E.P.O.R. 388

633 “Article 52(1) EPC plainly expresses that patent protection is reserved for creations in the technical field. In order to be patentable, the subject-matter claimed must have which have do you need? therefore have a ‘technical character’ or, to be more precise, involve a ‘technical teaching’, i.e. an instruction addressed to a skilled person as to how to solve a particular technical problem using particular technical means.” Official Journal of the European Patent Office Special Edition. 4, 2007. p48.

634 See e. g. T 22/85, OJ 1990, 12; T 154/04, OJ 2008, 46

635 Jacob, R. “Woolly Lines in Intellectual Property Law,” in Patents and Technological Progress in a Globalized World. Wolrad Prinz zu Waldeck und Pyrmont et al. (eds.) Berlin: Springer, 2009 at 787.

164 For instance, the EPO Board of Appeal in Novartis⁶³⁶ noted that a patent claim for a specific plant variety as the subject matter is not patentable. However, claims in which certain plant varieties are not claimed as subject matter are not excluded from patentability. The Novartis decision was so influential on European practice that the decision is reflected in the EPO’s Implementing Guidelines, which held that inventions regarding plants and animals were patentable as long as the technical feasibility was not restricted to an individual plant or animal variety.⁶³⁷ This can account for the patents granted for transgenic plants, which are not claimed as plant varieties in the application.

Also, in T 154/04,⁶³⁸ ‘technical subject matter’ was defined for the first time, which included the causal, perceivable result of a purposive human action on the physical world. In addition, this expansive understanding of a technical invention is found in the ‘broccoli’ and ‘tomato’ cases.⁶³⁹ But lately, the expansive understanding of inherent patentability reinforced by the EPO was confronted before the Enlarged Board of Appeal in Tomatoes II.⁶⁴⁰ The issue in this case was whether a technical plant or animal is excluded from patentability if the process used to make it is essentially biological. The problem surfaces because essentially biological processes for the production of plants or animals are excluded from patentability. Article 53(b) EPC prohibits patents for plant and animal varieties.⁶⁴¹ However, plants and animals are patentable provided the technical feasibility of the invention is not constrained to a plant or animal variety.⁶⁴² As stated in Tomatoes I, the EPO’s interpretation of that exclusion includes any conventional plant breeding process which, even if it involves the use of

636 Novartis, Decision T 1054/9S Technical Board of Appeal 3.3.4. 1997.

637 EPC Rule 23c (b): “Biotechnological inventions shall also be patentable if they concern plants or animals if the technical feasibility of the invention is not confined to a particular plant or animal variety.”

638 T 154/04 Duns Licensing Associates/Estimating Sales Activity [2007] EPOR 38

639 G2/07 & G1/08 BROCCOLI & TOMATOES/Essentially biological processes [2011] EPOR 27 (Tomatoes 1).

640 Case G 2/12 - Referral under Art 112(1)a) EPC by the Technical Board of Appeal T 1242/06 - 3.3.04 (Appl. No. 00940724.8) to the Enlarged Board of Appeal, pending under Ref. N° G 2/12 (Tomatoes II).

641 Article 53(b) of the EPC

642 See Directive 98/44/EC of the European Parliament and of the Council of July 1998. In fact, the EPO began granting patents for plants and animals in the beginning of the 19909s.

165 technical means, is distinguished by the fact that the traits of the plant or animal

resulting from it are governed by underlying natural forces and not by the technical process itself.⁶⁴³