tag:blogger.com,1999:blog-1949935810569534550.post6209447742183072714..comments2023-08-17T14:09:24.945+01:00Comments on PatLit: the patent litigation weblog: BGH on Patentability of Mathematical Methods - "Flugzeugzustand"Unknownnoreply@blogger.comBlogger3125tag:blogger.com,1999:blog-1949935810569534550.post-47115435071599426292015-11-10T09:38:22.163+00:002015-11-10T09:38:22.163+00:00Rule 42(1)c says that the description must "s...Rule 42(1)c says that the description must "state any advantageous effects". This wording clearly acknowledges that there may be no advantage in the invention. Quite right, too. Novelty and inventive step are what's needed.<br /><br />Note also that R42(1)c does not speak about advantageous <i>technical</i> effects. The advantages may be entirely non-technical (cheaper, more attractive etc).Anonymoushttps://www.blogger.com/profile/05434412538820460246noreply@blogger.comtag:blogger.com,1999:blog-1949935810569534550.post-40723112849866956452015-11-10T09:20:03.475+00:002015-11-10T09:20:03.475+00:00Well, the mix of advantage and technical effect wo...Well, the mix of advantage and technical effect would be the <i>advantageous technical effect</i> mentioned in R42(1)c EPC. This technical effect is supposed to be at least the starting point for the invention and is referred to in the "could-would approach" (.... . if the skilled person would have done so in expectation of some improvement or advantage). It is true that, in the absence of a technical advantage, the EPO formulates the problem as "to provide an alternative" but this is (in my experience) mostly followed by the statement that the modification is arbitrary and therefore obvious.<br /><br />The Germans have dispensed with the "Fortschrittserfordernis" (requirement of technical progress) some time ago but it is still lingering in the background. I think that this point is interesting because of the interplay with obviousness: The more disadvantageous a solution, the less obvious it is for a reasonable person skilled in the art. Michael Thesenhttps://www.blogger.com/profile/11216937613426928728noreply@blogger.comtag:blogger.com,1999:blog-1949935810569534550.post-21198089499909798862015-11-09T21:47:31.609+00:002015-11-09T21:47:31.609+00:00Interesting judgement, but the conclusion is surel...Interesting judgement, but the conclusion is surely not so surprising, is it?. If the thing is new and inventive, then that's that. A technical advantage is not a <i>requirement</i> of patentability (although it may provide evidence of inventive step). The technical boards of appeal may require a technical <i>effect</i>, but do they really demand a technical <i>advantage</i>?Anonymoushttps://www.blogger.com/profile/05434412538820460246noreply@blogger.com