Inventive activity
Inventive activity (or inventiveness in jargon ) is a prerequisite for the patentability of a technical invention, which is prescribed in many national and supranational patent laws . In addition to novelty , an inventive step has been a prerequisite for this since the 19th century .
Legal basis
German Patent Act (PatG), European Patent Convention (EPC), French Patent Act (Loi sur les brevets d'invention)
Section 1 of the German Patent Act (PatG) requires qualitatively the presence of "inventive step" as one of the prerequisites for the granting of a patent on a technical invention. Section 4 of the Patent Act defines in more detail that "... an invention [...] is deemed to be based on an inventive step if it does not result from the state of the art in an obvious manner for the person skilled in the art ".
The European Patent Convention (EPC) follows the same wording in its Articles 52 and 56 of the same legislative scheme as the German Patent Law in its §§ 1 and 4. FIG.
The same applies to the French patent law in its articles 6 and 10.
Patent Cooperation Treaty (PCT)
In the patent cooperation agreement , the system is similar: Art. 33 (1) requires the presence of inventive step and defines in Art. 33 (3) that “... a claimed invention is based on an inventive step if it applies to a A person skilled in the art according to the state of the art, as described in the Implementing Regulations, is not to be regarded as obvious at the prescribed relevant point in time. ”.
U.S. Patent Act
The US patent law is addressed with "USC 35" (USC = United States Code). Instead of “inventive step”, USC 35 uses the term “not obvious” and demands in § 103 (correct citation “35 USC 103)” for patentability that “... the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been [not] obvious at the time the invention was made to a person having ordinary skill in the art ... ".
Systematic function and content of the criterion
It makes economic sense and is politically desirable to avoid intellectual property rights on trivial modifications or combinations of known aspects. There should be no confusing scramble of rights from patents on banalities that would result in juridification and thus unjustified difficulties in economic activity.
The criterion of inventive step in today's practice therefore demands, in colloquial terms and in short, that a technical invention, in order to be patentable, must be more from a professional perspective than a simple modification or combination of previously known technical teachings. This means that simple revisions of known teachings (modifications and combinations) should remain free of patent rights and only the distinctive inventions should be accessible for patent protection.
Emergence
In the course of the first industrial revolution with its great advances, numerous technically trivial objects and non-technical methods appeared in all industrialized countries, to which exclusion rights were also claimed. These "inventions", judged involuntarily as not worthy of patent, could not be warded off, especially in the countries with a preliminary examination system and with the legal norms of novelty and usefulness alone:
In England the requirement prevailed that a patentable invention had to be a new principle created with diligence and ingenuity (according to Vice Chancellor Sir John Leach ) that had to be based on an "inventive step" (patent law of 1932). In the United States of America , the rule from the 1850s asserted that a patentable invention must be based on an act of invention that goes beyond what a skilled mechanic could think of.
In Germany, on the other hand, it was required that a patentable invention be a substantial improvement, that it produce a more advantageous result. In the 1880s, the Imperial Patent Office , to which first-class engineers belonged as “members”, developed the evaluation criterion “technical progress”, which was later expanded to become “essential technical progress”. The northern, central and eastern European countries also adopted the criterion. At the beginning of the 20th century, however, the Reichsgericht - presumably looking at its American counterpart, the Supreme Court - found that an invention must be based on a work that went well beyond the usual professional ability and action; it was called "inventive step". However, the Reich Patent Office was reluctant to follow this psychological view. Around 1930, “technical progress” and “inventive step” finally prevailed as two equally weighted criteria for patentability. It remained that way until the European harmonized German patent law of 1981.
The Northern, Central and Eastern European (“German-oriented”) patent rights assessed whether what the inventor invented was technically advanced. The Anglo-Saxon legal systems, on the other hand, assessed a train of thought that was subordinate to the inventor of his invention. The criterion of the one was technically well-founded and aimed at the result, that of the other was shaped by the psychology of talent and aimed at the conceptual how it came about.
The European national and supranational patent laws of the 1970s and 1980s expressly did not - against Switzerland's will - take over the criterion of technical progress. Instead, they standardized the psychological talent criterion of an “inventive step”. (In the other national laws, the words inventive step, activité inventive or actividad inventiva stand for this.) The “inventive step” must be judged by “the skilled person”. The break from a technical to a talented psychological criterion was not without reservations.
At that time the Europeans had obviously adapted completely to the Americans and their concepts of “skilled person” and “non-obviousness”. The US Code 35 of 1952 (patent law) determined namely in Sec. 103: There is no patent if the difference between the invention (the subject matter) and the state of the art (the prior art) is only such that it would have been obvious to a person having ordinary skill (have been obvious ).
Completion of the criterion
The unified European patent laws unanimously stipulate that an invention is only patentable if, among other things, it does not result from the state of the art in an obvious way for a person skilled in the art. A comparison is therefore made between the invention and the prior art from a professional's point of view and asked for differences that are not obvious.
The specialist is not a real but a fictitious legal person. Average skills of the people working in the respective profession are subordinated to him.
An invention is not regarded as obvious if one cannot expect a person skilled in the art that, based on the prior art , would have come across the invention immediately and with a reasonable amount of effort.
The term state of the art does not embody, as the word “state” indicates, the current status of a technical subject, but its scope with all its things and methods that have arisen from time immemorial, including everything that is technically outdated or what was already ineffective from the start. In any case, this status includes everything that became public somewhere and somehow in the world at some point before the filing date of the invention for the patent.
The invention to be assessed is the subject of the patent claims, which must accompany each patent application.
According to the case law of the Federal Patent Court , the Federal Court of Justice and the technical boards of appeal of the European Patent Office , the criterion of inventive step is to be understood in a purely objective manner. It does not matter how the invention to be assessed was actually made and whether it subjectively meant a special achievement for the inventor.
If there are doubts about the existence of an inventive step (lack of inventive step), complaints arise in the examination procedure and, if they cannot be resolved (e.g. by formulating specific patent claims), the patent application is rejected. It is also the decisive reason for the vast majority of revocations or declarations of patent nullity. In the practice of patent granting procedures, the discussion between the applicant and the patent office about the inventive step is the most complex aspect.
Critics regard the criteria for inventive step as fuzzy and not valid; the inventive step is impossible or difficult to operate. In terms of legislation, the concept of inventive step is an indefinite legal concept .
Assessment of inventive step at the European Patent Office
The practice of the European Patent Office for assessing inventive step in the context of the patent office examination procedure is presented below. This practice largely corresponds to German practice.
The so-called problem-solution approach, which enables an objective and comprehensible assessment of the inventive step, has become established for assessing inventive step. The problem-solution approach is divided into three phases:
- Determination of the closest state of the art and the relevant specialist,
- Determination of the objective technical problem to be solved, and
- Examination of the obviousness of the claimed invention for the relevant person skilled in the art.
The problem-solution approach is normally to be used by the European Patent Office during the examination. Its unfounded non-application can lead to the annulment of the contested decision and remittal within the framework of the appeal.
To 1.) Determination of the closest state of the art and the relevant specialist:
The closest prior art is a single disclosure that represents the most promising starting point for an obvious development that leads to the claimed invention. These and other disclosures are normally determined in the course of a search that precedes the examination procedure. The closest prior art should be assigned to the same or a related technical field and directed to a similar purpose or effect as the claimed invention.
To 2.) Determination of the objective technical task to be solved:
To determine the objective technical problem to be solved, the distinguishing features between the prior art and the invention are examined. The objective technical problem to be solved consists in modifying or adapting the closest prior art to achieve the technical effects that the invention brings with it over the prior art. The objective technical problem to be solved does not have to correspond to the problem formulated in the application documents for the invention. The objective technical problem to be solved can sometimes also be seen as a series of different subtasks if certain distinguishing features in combination do not have a technical effect.
To 3.) Examination of the obviousness of the claimed invention for the relevant expert:
Whether the claimed invention would have been obvious to a person skilled in the art is examined in view of the cited prior art and the objective technical problem. For this purpose, the closest prior art is linked to a further disclosure in each case in order to solve the task or one of the subtasks. It must be probable that the person skilled in the art would associate the further disclosure with the closest prior art. The closest prior art and the further disclosure should at least originate from neighboring areas, or the further disclosure should belong to a generally customary state of knowledge.
In general, a mere deterioration and an arbitrary, non-functional change in the state of the art cannot give rise to an inventive step.
"Inventive step" in utility model law
According to Section 1, Paragraph 1, Sentence 1 of the GebrMG, utility model protection requires an inventive step instead of the inventive step in the case of patents. The presumption that lower requirements for utility models compared to patents could apply in this way was rejected by the BGH in the "Demonstration Cabinet" decision.
literature
- F.-K. Beier: On the historical development of the inventiveness requirement . In: Commercial legal protection and domestic copyright . 1985, pp. 606-616.
- Alfred W. Kumm: From specialist to generalist in technology. A guide to technological thinking, analyzing and evaluating . Haag & Herchen, 2003, ISBN 3-89846-264-1
Individual evidence
- ↑ Articles 52 and 56 EPC
- ↑ Articles 6 and 10 of the French Patent Law
- ↑ Art. 33 para. 3 PCT
- ↑ USC 35 (PDF)
- ↑ a b R. Klostermann: The patent legislation of all countries . Verlag Guttentag, Berlin 1876, pp. 27, 28, 54, 58, 59 and AW Kumm: The inventions and their criteria - investigation of some basic patent law terms with regard to the European standardization efforts . In: Commercial legal protection and copyright, foreign and international part (GRUR Inter.), 1963, pp. 289–297.
- ↑ F.-K. Beier: On the historical development of the inventiveness requirement . In: GRUR Inland 1985, pp. 606–616.
- ↑ The legal anchoring of inventive step was assessed as questionable early on. This is also the case in 1985 by Beier, On the historical development of the requirement of inventiveness , p. 616 (closing).
- ↑ On the problems for example AW Kumm: The evaluation of inventive step - a rationally unsolvable problem of the century . In: epi (European Patent Institute) Information , 1998, pp. 23-26.
- ↑ "Guidelines for Examination in the European Patent Office" . 2010 ( epo.org [PDF; accessed August 9, 2010]).
- ^ Decision of the Federal Court of Justice "Demonstration Cabinet " X ZB 27/05 of June 20, 2006.