A draft position paper on the requirements for an invention to have technical character and be susceptible of industrial application as specified in the draft Substantive Patent Law Treaty [SPLTa.12(1)(a) and SPLT1.12(4)]. The thoughts in the paper develop those of Workshop 3 of the Goodwood Park Executive Committee meeting which proposed that to be patentable:

'An invention is distinguished from the prior art in that it is novel, non-obvious and useful'

The paper starts from the proposition that neither Article 1(3) of the Paris Convention nor TRIPSa.27(1) was intended to be restrictive. It is suggested that, given its proper historical context, Article 1(3) of the Paris Convention was intended to afford protection for industrial property broadly in all fields of "industry" and "commerce" existing at the time of negotiation of the Paris Convention and that the language of TRIPSa.27(1), in stipulating that patents should be available for inventions "in all fields of technology" (emphasis added) was intended to be all-encompassing It is desirable that the SPLT should cater not only for contemporary technology, but also for future technologies and applied knowledge, so that such future technologies and applied knowledge may benefit from patent protection. Noting the increased prominence of the service industry in the developed world in particular the paper questions whether an industrial based standard remains appropriate for defining the scope of patentable subject-matter. The paper observes that there appears to be no reason why the scope of patentably subject-matter should be limited to "fields of technology". Neither the European Patent Convention nor US Code 35 on patents requires an invention to be capable of use or manufacture in a "field of technology", and there would seem to be no good reason for now imposing this additional requirement.

The paper notes that there is a requirement for a patentable invention to be distinguished from aesthetic or abstract subject-matter of the kind that might be protectable by copyright or design right. Thus, it is proposed that, to be patentable, an invention must have a function or utility, but such function or utility necessarily does not have to be a technical one. It is also important that a patentable invention should be distinguished from the prior art by one or more useful features. This is necessary to distinguish patentable inventions from inventions which differ from the prior art only in respect of abstract or aesthetic features.

The paper thus proposes the deletion altogether of the requirement for a patentable invention to have industrial applicability and its replacement with a utility requirement.

In conclusion the paper proposes the following:

The deletion of SPLTa.12(1)(a) and the amendment of SPLTa.12(4) to require that "an invention shall be distinguished from the prior art by a specific, substantial and credible utility".

Finally the paper suggests that in the event the SCP decides that requirement for industrial application should be retained then, as a minimum, that requirement should at least be updated to reflect the nature of contemporary industry. By way of a suggestion, the requirement for industrial application could be replaced with a requirement that a patentable invention shall be susceptible of "economic exploitation" or of "economic relevance".