Study Paper M2 by classifying each fact pattern into one legal ground at a time: exclusion under Article 52 as such, novelty under Article 54, inventive step under Article 56, priority under Articles 87 and 88, entitlement under Article 60, or scope under Article 69. Each frame has its own test and evidence. Misclassifying the frame produces a technically correct argument that answers the wrong question, so practice frame selection as a separate skill.
Choosing the legal ground before writing a single sentence
Before analysing any scenario, classify the problem into one of the EPC's decision frames — exclusion, novelty, inventive step, priority, entitlement, or claim scope — because each frame asks a different question and uses a different evidentiary base.
The same client facts can be argued under several grounds, and each ground asks a distinct question. A machine shown at a public exhibition raises novelty, because a single prior disclosure either makes every feature available or it does not. Two documents combined with common general knowledge raise inventive step, which is a judgement about obviousness rather than about what was disclosed. Writing a novelty argument for an obviousness question, or the reverse, yields a well-reasoned answer to the wrong problem.
Train this as a distinct step: read the scenario, then write one sentence stating the legal question before any analysis. If your sentence cannot name the ground, the test, and the evidence type, you are not ready to write. The table below is a working classification aid; rebuild it from memory during practice until frame selection becomes automatic rather than a lookup.
| Legal ground | Trigger question | Named test | Evidence type |
|---|---|---|---|
| Subject-matter exclusion (Art. 52) | Is any claim category excluded as such? | Technical character of the claim as a whole | Claim text only, no prior art |
| Novelty (Art. 54) | Is the invention directly and unambiguously disclosed in one item? | Feature-by-feature comparison against a single disclosure | One prior document or one prior use |
| Inventive step (Art. 56) | Would the skilled person obviously arrive at the invention? | Problem–solution approach | Closest prior art plus another document or common general knowledge |
| Priority (Art. 87, 88) | Does the later application claim the same invention as the earlier one? | Same-invention disclosure test | The earlier application's text |
| Entitlement (Art. 60) | Who holds the right to the European patent? | Designation of the inventor; transfer rules | Employment and assignment facts |
| Scope (Art. 69 and Protocol) | How far does protection extend? | Claims interpreted in light of the description | Claims plus description and drawings |
The exclusion trap: distinguishing 'as such' from lack of technical contribution
Article 52 asks what category the claimed subject matter belongs to; Article 56 asks whether the technical contribution is obvious. A mixed claim with any hardware feature normally passes the exclusion stage and must be tested for inventive step instead.
The excluded categories in Article 52(2) apply only 'as such', and the claim as a whole is assessed for technical character. A claim reciting servers, displays, sensors, or any physical means is not merely an excluded category as such, because those features are technical. That is why the exclusion analysis for a mixed-type invention usually ends quickly, and the real battleground shifts to inventive step, where the treatment of individual features becomes decisive.
Confusing the two frames leads to opposite conclusions. Concluding that a claim is excluded ends the analysis; concluding that it is obvious requires prior art and a formulated technical problem. Within the inventive step frame, features lacking technical character cannot support an inventive contribution and are set aside when formulating the objective technical problem — but that disregard is an Article 56 operation, not an Article 52 exclusion. Keeping the vocabulary separate is part of the discipline.
Worked scenario: a computer-implemented method and the order of analysis
Run exclusion and inventive step in the correct order: confirm technical character from the claim as a whole first, then apply the three-step problem–solution approach, setting non-technical features aside only at the problem-formulation stage.
Scenario: a claim recites a method of trading comprising receiving an order on a server, calculating a price with a mathematical model, and displaying the result on a screen. A tempting mistake is to reason that pricing and trading are listed as excluded subject matter and conclude the claim is unpatentable as a business method. That conclusion skips the claim as a whole: the server and the screen are technical features, so the claim has technical character and is not excluded as such.
The better decision is to move to Article 56. Apply the three steps named: determine the closest prior art, formulate the objective technical problem, and ask whether the skilled person would — not merely could — have arrived at the invention. The trading and pricing features have no technical purpose of their own, so they are set aside unless they interact technically with the remaining features. Why it matters: the mistake ends the analysis at the wrong gate and never engages with prior art at all.
Worked scenario: selection invention and what a prior-art range actually discloses
Novelty turns on direct and unambiguous disclosure of every claim feature in a single prior disclosure. A generic numerical range does not automatically destroy the novelty of a narrow sub-range unless the specific values are individually made available.
Scenario: a prior document discloses an alloy containing 50–100 percent by weight of a component, and a claim specifies 62–64 percent. A plausible mistake is to reason that the claimed values fall inside the disclosed range, so the claim lacks novelty. That reasoning treats the whole range as if each of its values had been individually made available, which the disclosure test does not support: the question is what the skilled person takes directly and unambiguously from the single document.
The better decision is to check whether the specific sub-range is individualised in the prior document — for example by an example or an express statement — and to distinguish a generic disclosure from an implicitly disclosed feature, which must necessarily be present to result from the document. Why it matters: the two frames reach different conclusions about the same document, and the selection-invention doctrine exists precisely because a range as written and values actually made available are not the same thing.
Priority and entitlement: the same-invention test and successor in title
A priority claim survives when the later application claims the same invention as disclosed in the earlier one and the applicant derives from the earlier filer — a chain-of-title question, not a question of identical applicant names.
The same-invention test compares the claimed subject matter of the later application with the disclosure of the earlier application; where the later claims go beyond that disclosure, the corresponding claims cannot rely on the earlier date. In practice this means feature-mapping each claimed invention against the earlier text, claim by claim, rather than asking whether the two applications read similarly as a whole. Partial reliance on an earlier date is possible, so the analysis is per claim, not per application.
On entitlement, Article 87 entitles any person or their successor in title to claim priority, so a change of company name, an assignment after the earlier filing, or an applicant holding rights through a chain of transfers does not by itself defeat the priority claim. A common practice error is to reject priority solely because the applicant names differ; the better decision is to examine the chain of title in the scenario and only then conclude. Keep entitlement of the patent (Article 60) as a separate frame: it concerns who owns the application, distinct from whether the earlier date is available.
Interpreting claims: Article 69, the Protocol, and two distinct reading tasks
Claim scope is determined by the terms of the claims, with the description and drawings used to interpret them, balanced between strict literalism and reading the claims as a guideline — two checks rather than one.
Article 69 sets the extent of protection by the terms of the claims, and the description and drawings serve to interpret them; the Protocol on Interpretation guards against both a purely literal reading and a reading that treats the claims as mere guidelines. EPO practice expresses this as a two-pronged approach: first considerations based on the claim wording in its context, then considerations based on the description. Practise writing both prongs separately so a scope conclusion rests on more than one reading of the words.
Distinguish two different reading tasks that use the same claim text. Interpretation for scope under Article 69 asks how far protection extends for a third party's product. Clarity under Article 84 asks whether the claims define the matter for which protection is sought in terms a skilled reader can understand. A term can be clear enough to examine yet disputed in scope, so identify in each exercise which question you are answering before quoting any interpretive principle.
A practice cycle with a graded exercise and readiness checks
Build readiness by rotating through the topic frames in weekly blocks, using one graded exercise repeatedly: feature-map a real claim set, classify the legal frame, and apply the named test while scoring yourself against a fixed rubric.
Exercise: choose a published European application's claim set and its own description, both freely available through the EPO's Espacenet search service. Build a feature-analysis table listing each claim feature, then write one paragraph classifying the legal frame you would use and one paragraph applying the named test to the claim as a whole. Score your output against the rubric below; a self-check score is a learning milestone, not a prediction of any exam outcome.
An adaptable sequence: rotate frame-selection drills on short fact patterns first; then dedicate blocks to mixed-invention analysis, selection novelty, priority chains, and the route options between direct European filing and the PCT route entering the European regional phase; finish with a full scenario under self-imposed time conditions, marking your own answer against the rubric. International-system coverage should focus on what each phase of the PCT route provides and how it connects to the EPC route, kept separate from national-route facts.
Readiness checks: you can rebuild the decision table from memory without notes; you can state the same-invention test, the disclosure test, and the three problem–solution steps in one sentence each; your last marked exercise addresses every claim feature individually and names the legal ground for each conclusion; and you can explain, for a mixed claim, which features were set aside at problem formulation and why. Administrative details such as dates, fees, and eligibility are published by the EPO at epo.org and change over time, so confirm them there rather than in study notes.
- Rubric: every claim feature is addressed individually, none merged or skipped
- Rubric: each conclusion names its legal ground and the named test applied
- Rubric: non-technical features are identified and their treatment justified within the correct frame
- Rubric: the objective technical problem is formulated without importing the claimed solution as a goal
- Rubric: priority and entitlement are assessed as separate questions with separate facts
References and further reading
Use these references to explore the concepts and check the latest information from the relevant organizations.