E-Mail via SMS - BGH on Inventive Step

When establishing a logical chain of considerations leading the skilled person from the prior art to the subject-matter of a claim in order to challenge its inventiveness, the most difficult part consists often in finding the incentive of the skilled person to take a particular step. The case-law both in Germany and at the EPO requires such an incentive e.g. for the combination of different pieces of prior art.

In a decision issued last week, the German Federal Supreme Court BGH had to decide on a patent relating to a method for transmitting e-mails using the SMS-Standard. The method required a modification of the data structure according to the SMS-Standard and the solution employed mechanisms which had already been provided (though for slightly different purposes) in the same standard.

The BGH found that the skilled person faced with the problem of improving a standard has an incentive to use the mechanisms provided therein and - if the standard provides for a manageable (überschaubar) number of possible approaches for solving the technical problem - to take each of these approaces into consideration even if an unmanageable number of possible approaches would be imagineable outside of the standard.