Wednesday, 22 February 2012

Some Need a Slight Nudge, Some Need a Kick in the Trousers

One of the more problematic issues when discussing the inventive step is the “incentive” or “prompting” needed by the skilled person to combine particular pieces of prior art. Both EPO examiners and opponents sometimes have a really hard job to find such an incentive and often end up with citing the unlucky EPO decision T 1126/09 out of its context, according to which this prompting “need not be found in the cited documents but may result from the inventor’s fundamental endeavour to simplify the existing method/device“.

The German supreme court BGH has now found in the decision X ZB 6/10 “Installiereinrichtung II that it depends on the circumstances how intense this prompting has to be. According to the judgement of the BGH, the prompting need not be explicit but may also be found in these factual circumstances:

The headnote (in a rough translation) reads:
 The extend and the degree of concreteness of promptings in the prior art needed by the skilled person in order to further develop a known solution in a particular direction is a question which must be answered on a case-by-case basis requiring an overall consideration of all relevant elements of the factual circumstances. However, not only explicit textual indications to the skilled person are relevant. Rather, the characteristics of the technical field under consideration, in particular concerning the education of the skilled persons, the standard approach for developing technological innovations in the field, technical requirements resulting from the construction or from the application of the subject-matter concerned as well as non-technical requirements may play a role.”

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