What can be patented

Not everything that is new, useful or clever can be patented. European and Italian law ask for three precise things and rule a few others out. On this page we go through them one by one, in plain words, and try them on an example you can look at: a telescope.

The rules quoted are those of the European Patent Convention (EPC) and of the Italian Industrial Property Code (the "Code"). The sources are listed at the end of the guide.

What an invention is

In patent law an invention is a technical solution to a technical problem. A wish, an idea or a nice result is not enough: you need a concrete way, made of technical means, to achieve it.

The EPC gives no definition. It says, though, that European patents are granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application (Art. 52(1) EPC). The Italian Code says the same (Art. 45, paragraph 1). The European Patent Office (EPO) Guidelines explain that an invention must have technical character (EPO Guidelines, G-II, 1).

An example outside our example. Discovering that a certain material withstands mechanical shock cannot be patented. A railway sleeper made of that material can (EPO Guidelines, G-II, 3.1). The decisive step is to use the discovery to build something.

Three requirements in brief

To be patented, an invention needs three qualities, all together.

Requirement	The question it answers	Where it is written
Novelty	Did it already exist, in some way, before the filing date?	Art. 54 EPC; Art. 46 of the Code
Inventive step	Was the solution obvious to a person skilled in the art?	Art. 56 EPC; Art. 48 of the Code
Industrial application	Can it be made or used in some kind of industry?	Art. 57 EPC; Art. 49 of the Code

They are separate requirements. An invention can be new but obvious, or not obvious but already known to someone: in both cases it cannot be patented. Before all this there is a preliminary check: what is claimed must really be an invention and not one of the excluded things, which we see below (EPO Guidelines, G-II, 2).

Novelty

An invention is new if it does not form part of the "state of the art" (Art. 54(1) EPC). The state of the art is everything made available to the public by written or oral description, by use, or in any other way, before the date of filing of the application (Art. 54(2) EPC). The Code says it applies to what is accessible in Italy or abroad (Art. 46, paragraph 2).

Three details show how broad this definition is (EPO Guidelines, G-IV, 1).

Place does not matter: an article read on another continent is part of the state of the art.
Language and means do not matter: a book, a video, a product on sale.
Age does not matter: a document from a century ago can destroy novelty.

You can lose novelty yourself. If the inventor makes the idea public before filing, that disclosure becomes part of the state of the art against the inventor's own application. We come back to this in the section on disclosure before filing.

What "public" means. A document is made available to the public if, on the relevant date, people could learn its content and there was no duty of confidentiality restricting its use or spread (EPO Guidelines, G-IV, 1). A product put on the market is part of the state of the art, even if nobody is able to analyse and reproduce it (EPO Guidelines, G-IV, 2).

In the example. Our telescope has an actuator (44) that turns about an axis offset from the secondary mirror (26). If before filing there is a telescope, a catalogue or an article showing exactly this, the invention is not new. If it shows only an actuator that turns about the secondary mirror axis, novelty may remain.

Inventive step

An invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (Art. 56 EPC; Art. 48 of the Code). The "person skilled in the art" is an average professional in the field: they know what is already known and have the normal means for tests and experiments, but they are not a genius (EPO Guidelines, G-VII, 3).

Obvious means "that which does not go beyond the normal progress of technology but merely follows plainly or logically from the prior art" (EPO Guidelines, G-VII, 4). If an expert, faced with the same problem, would have reached the solution without special effort, there is no inventive step.

The Italian Patent and Trademark Office (UIBM) gives some examples of solutions that courts have found too obvious: changing a unit of measurement, making a product portable, replacing a material, replacing one part with another that works the same way (UIBM, Requisiti di brevettabilità). This does not mean that a different material takes value away from an idea: the solution is looked at as a whole, and what counts is how the parts work together, not the material taken alone.

How it is assessed. The EPO uses a method in three steps, the problem-solution approach: the closest document is chosen, the technical problem the invention solves compared with that document is stated, and the question is whether an expert, to solve it, would have changed the document in the way the invention does (EPO Guidelines, G-VII, 5). We explain it slowly on the page "Understanding prior art".

In the example. An expert knows the actuator serves to adjust the focus. If no document suggests offsetting the axis of rotation to make the focusing finer, that step may not be obvious. If someone already suggested it, even in another corner of optics, the judgement changes.

Industrial application

An invention is susceptible of industrial application if it can be made or used in any kind of industry, including agriculture (Art. 57 EPC; Art. 49 of the Code). "Industry" is understood broadly: any physical activity of technical character, as distinct from the aesthetic arts (EPO Guidelines, G-III, 1).

This requirement rules out very little. The classic example is a machine alleged to work against the laws of physics, such as a perpetual motion machine (EPO Guidelines, G-III, 1; UIBM, Requisiti di brevettabilità).

In the example. A telescope can be made and used: the requirement is met without discussion.

What is not regarded as an invention

The EPC lists a few things that "shall not be regarded as inventions" (Art. 52(2) EPC). They are all abstract or non-technical (EPO Guidelines, G-II, 1).

Item on the list	In plain words
Discoveries, scientific theories, mathematical methods	Finding a law or a property of nature, or a formula, is not inventing. A practical use can be patented, the discovery cannot (G-II, 3.1, 3.2, 3.3).
Aesthetic creations	An appearance that pleases or does not is not technical. The tread pattern of a tyre, however, can be technical if it improves water channelling (G-II, 3.4).
Schemes, rules and methods for mental acts, playing games or doing business	The rules of a game, a method for organising a company, a billing scheme, in themselves, are not inventions (G-II, 3.5).
Programs for computers	The program "as such" is excluded. See the section on software (G-II, 3.6).
Presentations of information	What is shown to a person and how it is shown, in itself, is not technical (G-II, 3.7).

The words "as such". The exclusion applies only to the extent that the application relates to those things "as such" (Art. 52(3) EPC; Art. 45, paragraph 3, of the Code). If the claim uses technical means, the exclusion does not apply. A business method carried out with a computer, for example, passes this first check (EPO Guidelines, G-II, 3.5.3). The problem of inventive step remains: non-technical features cannot support it on their own (EPO Guidelines, G-II, 2).

In Italy. The Code's list is similar but worded its own way: discoveries, scientific theories and mathematical methods; plans, principles and methods for intellectual activities, for games or for commercial activity, and computer programs; presentations of information (Art. 45, paragraph 2). It does not mention aesthetic creations.

Exceptions on grounds of principle

Besides the list above, the EPC forbids granting patents for some things for different reasons (Art. 53 EPC).

Inventions whose commercial exploitation would be contrary to "ordre public" or morality. The mere fact that exploitation is prohibited by a law is not enough, by itself, to make it excluded (Art. 53(a) EPC).
Plant or animal varieties and essentially biological processes for the production of plants or animals. Microbiological processes and their products are an exception (Art. 53(b) EPC; Art. 45, paragraph 4, letter b), of the Code).
Methods for treatment of the human or animal body by surgery or therapy, and diagnostic methods practised on the human or animal body (Art. 53(c) EPC; Art. 45, paragraph 4, letter a), of the Code).

What remains patentable in medicine. The exclusion of methods does not cover products, in particular substances and compositions for use in those methods (Art. 53(c) EPC). Surgical, therapeutic or diagnostic instruments and apparatus can also be patented (EPO Guidelines, G-II, 4.2). And a diagnostic method is not excluded when one of its technical steps is carried out outside the body, for example in vitro on a sample already taken: the exclusion applies only when every technical step is practised on the body (decision G 1/04 of the EPO Enlarged Board of Appeal).

These exceptions are technical ground, full of special cases. If your idea comes close to them, the first thing to do is talk to a patent attorney.

Software and computer-implemented inventions

Many people think that "software cannot be patented". The reality is more nuanced.

The rule. Programs for computers "as such" are excluded (Art. 52(2)(c) and 52(3) EPC). A program is not excluded, though, if it has technical character. To have it, it must produce a "further technical effect" when run on a computer: an effect that goes beyond the normal physical interactions between program and machine, such as the electric current flowing in the circuits (EPO Guidelines, G-II, 3.6).

Examples of a further technical effect. Controlling an anti-lock braking system, determining the emissions of an X-ray device, compressing video, restoring a distorted digital image, encrypting electronic communications (EPO Guidelines, G-II, 3.6.1). The UIBM adds image processing, noise suppression, coding and decoding, and recalls that one speaks of "computer-implemented inventions", not of software patents (UIBM, Brevetti e software).

Method, medium or device. A claim to a method carried out by a computer, to a readable storage medium or to a device cannot be refused as a "program as such", because it uses technical means (EPO Guidelines, G-II, 3.6).

Two hurdles, not one. The first is eligibility: the claim, as a whole, must not be an excluded thing. The second is inventive step, where only the features that contribute to technical character count (EPO Guidelines, G-II, 2). Software that performs a non-technical aim faster or better, a business practice for example, is as a rule not enough to clear this second hurdle (EPO Guidelines, G-II, 3.6).

Data and screens. Showing information to a person is not technical in itself. It can become so if it credibly helps to perform a technical task, and it does not depend on the user's taste (EPO Guidelines, G-II, 3.7).

Copyright. The code of a program is anyway protected by copyright, if original. It is a different protection: it does not cover the technical idea but its expression (UIBM, Brevetti e software).

In the example. The telescope in the example has no software: the actuator (44) is driven by a screw. If a software module adjusted the focus by measuring the sharpness of the image, the application would have to explain the technical effect of that module and describe it with technical means.

Disclosure before filing

This is the most common trap. In Europe there is no general "grace period". If the invention becomes public before the filing date, for whatever reason and even by the inventor's own hand, it is no longer new (Art. 54(2) EPC). An article, a talk, a web page, a trade fair, a social media post, a prototype shown to customers without restrictions: all count. The UIBM says so expressly: publishing in a scientific journal, presenting at a conference, commercial use or display in a catalogue can destroy novelty (UIBM, Requisiti di brevettabilità).

The only two European exceptions. The EPC disregards a disclosure that occurred in the six months preceding filing if it was due to an evident abuse in relation to the applicant, or if the invention was displayed at an official or officially recognised international exhibition, under precise conditions (Art. 55 EPC; EPO Guidelines, G-V, 1 and 2). They are narrow exceptions: they do not cover a presentation you chose to make.

In Italy. The Code provides similar cases: evident abuse in the six months before filing, and official or officially recognised exhibitions (Art. 47, paragraphs 1 and 2).

The practical rule. Keep the idea confidential until you have filed. If you must talk about it with someone, have them sign a confidentiality agreement first: the UIBM itself recommends it (UIBM, Requisiti di brevettabilità). A document is public only if there is no duty of confidentiality (EPO Guidelines, G-IV, 1).

And after the first filing. After filing your first application you have twelve months to file the same application in other countries, if you wish, and claim the date of the first: this is the right of priority (Art. 87(1) EPC). In that case the priority date counts as the filing date for assessing novelty (Art. 89 EPC). The period starts with the first filing: it does not save what was disclosed before.

In the example. If you had shown our telescope with the offset actuator at a trade fair before filing, that fair would be a disclosure that destroys novelty, apart from the narrow exceptions above.

A balcony example. You built a prototype and use it on your balcony, where the neighbours pass by? If anyone can see it and understand how it is made, and nobody is bound to secrecy, it can count as public use. Showing it at a fair, putting it on sale or posting it online before filing destroys novelty (Art. 54(2) EPC). Until you have filed, use it and show it only to people who have promised to keep it confidential.

Patent, secret or model

A patent is not the only way to protect an idea. In short, the four main tools.

Tool	What it protects	How it works	Duration
Patent for invention	A new, non-obvious technical solution	You file an application, which becomes public after 18 months. The right arises with grant (Art. 64 and 97 EPC; Art. 53, paragraph 1, of the Code); from publication the application already gives provisional protection (Art. 67 EPC; Art. 53, paragraph 2, of the Code)	20 years from filing (Art. 63(1) EPC; UIBM)
Trade secret	Confidential information with economic value, protected by reasonable measures	Nothing is filed. You are protected only against those who use it abusively, not against those who find it out independently (Arts. 98 and 99 of the Code)	As long as it stays secret
Utility model	New shapes, arrangements or combinations of parts of machines, tools, everyday objects (Art. 82 of the Code)	No prior-art search (UIBM)	10 years from filing (UIBM)
Registered design	The appearance, that is lines, contours, colours, shape of a product (Art. 31 of the Code)	The design must be new and have individual character. A disclosure by the author in the twelve months before filing does not count against them (Art. 34, paragraph 3, of the Code)	Up to 25 years from filing: the registration lasts 5 years and is renewed in steps of 5 years (Art. 37 of the Code)

Patent versus secret. With a patent you explain to the world how the invention works, and in exchange you obtain an exclusive right. With a secret you publish nothing, but whoever works out the same solution alone is free to use it. And if you sell a product, anyone can buy it: for the Guidelines a product put on the market is part of the state of the art (G-IV, 2). When an idea can be understood by looking at the product, secrecy is a weak defence.

Utility model. It protects improvements to the shape or arrangement of the parts of an object, machine or tool that make it more effective or more convenient to use. It does not protect processes (UIBM, Brevetto per modello di utilità).

Registered design. It protects how a thing looks, not how it works. The look of the telescope could be a design, its focus actuator a patent.

In the example. The actuator with the offset axis is an arrangement of parts: it could suit a patent for invention or a utility model. The shape of the top ring (42) could be a design. Which route to choose is a decision to take with a patent attorney.

What Zenit prepares. Zenit prepares the draft of a patent for invention. It does not prepare utility model applications or registered design applications: if you think one of these routes suits you, talk to a patent attorney.

Example telescope put to the test

Let us put the pieces together, as a checklist.

Is it an invention? Yes: a technical solution, with mechanical means, to a technical problem (finer focusing).
Does it fall under an exclusion? It is not a discovery, a formula, a business method, a program or a presentation of information. It does not concern the human body, plants or animals.
Is it industrially applicable? Yes: it can be made and used.
Is it new? It depends on what exists before the filing date. Nobody has searched yet: you find out by searching, and never with certainty (see "Understanding prior art").
Does it involve an inventive step? It depends on the previous point and on what an expert would have done.
Has anyone talked about it in public? If so, the problem is already there.

The result of this checklist is a first impression, not a judgement.

Before writing your own

This page is general information, not legal advice: no rule quoted here guarantees that a patent will be granted or valid. A real application should be reviewed by a patent attorney (mandatario). In the app the topics of this page correspond to the steps Questions, Understanding and Prior art.

Sources

Art. 53 EPC, Exceptions to patentability: https://www.epo.org/en/legal/epc/2020/a53.html (read on 2026-10-05)
Art. 54 EPC, Novelty: https://www.epo.org/en/legal/epc/2020/a54.html (read on 2026-10-05)
Art. 55 EPC, Non-prejudicial disclosures: https://www.epo.org/en/legal/epc/2020/a55.html (read on 2026-10-05)
Art. 56 EPC, Inventive step: https://www.epo.org/en/legal/epc/2020/a56.html (read on 2026-10-05)
Art. 57 EPC, Industrial application: https://www.epo.org/en/legal/epc/2020/a57.html (read on 2026-10-05)
Art. 89 EPC, Effect of priority right: https://www.epo.org/en/legal/epc/2020/a89.html (read on 2026-10-05)
Art. 93 EPC, Publication of the European patent application: https://www.epo.org/en/legal/epc/2020/a93.html (read on 2026-10-05)
G-II, 1 and 2: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_1.html (read on 2026-10-05)
G-II, 3.1 Discoveries: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_3_1.html (read on 2026-10-05)
G-II, 3.2, 3.3, 3.4: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_3_2.html (read on 2026-10-05)
G-II, 3.5.3 Business: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_3_5_3.html (read on 2026-10-05)
G-II, 3.6 and 3.6.1 Programs for computers: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_3_6.html (read on 2026-10-05)
G-II, 3.7 Presentations of information: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_3_7.html (read on 2026-10-05)
G-II, 4.2 Surgery, therapy and diagnostic methods: https://www.epo.org/en/legal/guidelines-epc/2026/g_ii_4_2.html (read on 2026-10-05)
G-III, 1 Industrial application: https://www.epo.org/en/legal/guidelines-epc/2026/g_iii_1.html (read on 2026-10-05)
G-IV, 1: https://www.epo.org/en/legal/guidelines-epc/2026/g_iv_1.html (read on 2026-10-05)
G-IV, 2 Enabling disclosure: https://www.epo.org/en/legal/guidelines-epc/2026/g_iv_2.html (read on 2026-10-05)
G-V, 1 and 2 Non-prejudicial disclosures: https://www.epo.org/en/legal/guidelines-epc/2026/g_v_1.html (read on 2026-10-05)
G-VII, 3 and 4: https://www.epo.org/en/legal/guidelines-epc/2026/g_vii_3.html (read on 2026-10-05)
G-VII, 5, 5.1, 5.2, 5.3: https://www.epo.org/en/legal/guidelines-epc/2026/g_vii_5.html (read on 2026-10-05)
Italian IP Code (D.Lgs. 30/2005), art. 45 (Subject of the patent), Normattiva: https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art45 (read on 2026-10-05)
Italian IP Code, art. 46 (Novelty): https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art46 (read on 2026-10-05)
Art. 48 (Inventive step), art. 49 (Industrial application): https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art48 (read on 2026-10-05)
Art. 51 (Sufficient disclosure), art. 53 (Effects of patenting): https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art51 (read on 2026-10-05)
Art. 82 (Utility model, subject): https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art82 (read on 2026-10-05)
Italian IP Code, art. 31 (Subject of the registration), art. 32, 33, 34 (designs and models): https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art31 (read on 2026-10-05)
Art. 98, art. 99 (Trade secrets): https://www.normattiva.it/uri-res/N2Ls?urn:nir:stato:decreto.legislativo:2005-02-10;30~art98 (read on 2026-10-05)
UIBM, Requirements for patentability: https://uibm.mise.gov.it/index.php/it/brevetti/brevetto-per-invenzione-industriale/requisiti-di-brevettabilita (read on 2026-10-05)
UIBM, Patents and software: https://uibm.mise.gov.it/index.php/it/brevetti/brevetto-per-invenzione-industriale/brevetti-e-software (read on 2026-10-05)
UIBM, Utility model patent: https://uibm.mise.gov.it/index.php/it/brevetti/brevetto-per-modello-di-utilita (read on 2026-10-05)