Chapter §25.06 Industrial Applicability Requirement of Foreign Patent Systems

• Jurisdiction: United States

§25.06 Industrial Applicability Requirement of Foreign Patent Systems

[A] Definition of Industrial Applicability

In foreign patent systems and multinational patent treaties, the U.S. utility requirement¹³⁴ roughly corresponds to a mandate that patentable inventions possess "industrial applicability."¹³⁵ The European Patent Convention (EPC) further defines "susceptible of industrial application" to mean whether an invention "can be made or used in any kind of industry, including agriculture."¹³⁶ This language is intended to expressly include agricultural inventions within patentable subject matter while excluding methods of medically treating humans and animals.¹³⁷

[B] Morality/Public Policy Component

In contrast with U.S. law, foreign patent codes do speak to the morality of inventions, although they statutorily categorize this as an issue of potentially patentable subject matter rather than of industrial applicability. For example, the European Patent Convention (EPC) provides that European patents shall not be granted in respect of

(a) inventions the commercial exploitation of which would be contrary to "ordre public" or morality; such exploitation shall not be deemed to be so contrary merely because it is prohibited by law or regulation in some or all of the Contracting States;. . . . ¹³⁸

This provision permits EPC contracting states to exclude from patenting those inventions whose commercial exploitation is banned in the respective country, if such exclusion is deemed necessary to protect the interests of "ordre public"¹³⁹ or morality.¹⁴⁰

Decisions from the European Patent Office have not yet ratified a single, succinct test for determining what types of inventions violate this morality criterion.¹⁴¹ The "ordre public" or "morality" language of EPC art. 53(a) is echoed in Article 27.2 of the WTO-administered Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS),¹⁴² which gives WTO member countries the option of adopting a similar morality-based exclusion from patenting.

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Notes:

^[134] See supra Chapter 10 ("The Utility Requirement") in Volume I of this treatise.

^[135] See Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) art. 27.1, Dec. 15, 1993, 33 I.L.M. 81 (1994) (requiring that invention be "capable of industrial application"); TRIPS art. 27.1 at n.5 (stating that for purposes of article, "capable of industrial application" may be deemed by member countries to be synonymous with "useful")...