The Closest Prior Art and its Neighborhood

One of the important differences between the assessment of inventive step at the EPO and in the German case-law lies in the definition of the starting point for inventive step. While the EPO usually focusses on a particular document selected as the "closest prior art", the Bundespatentgericht and BGH usually take a more holistic view on the prior art as the summary knowledge of the skilled person, which may be exemplified and proven by one or more documents.

The decision T1841/11 seeks to find an intermediate solution by defining a broader field of suitable starting points rather than a single one. The headnote reads as follows (emphasis added):

The closest prior art should relate to the same or at least a similar purpose (or objective) as the claimed invention. Even if prior art relating to the same purpose is available, it is not excluded that a document relating to a similar purpose might be considered to represent a better - or at least an equally plausible - choice of closest prior art, provided that it would be immediately apparent to the skilled person that what is disclosed in the document could be adapted to the purpose of the claimed invention in a straightforward manner, using no more than common general knowledge (Reasons, point 2.6).

If, despite the availability of prior art relating to the same purpose as the claimed invention (here: manufacturing a semiconductor substrate comprising a silicon-germanium film), it is nevertheless considered appropriate to select as closest prior art a disclosure relating to a similar purpose (here: manufacturing a semiconductor substrate comprising a germanium film), at least one claimed feature corresponding to the purpose of the invention will generally appear as a difference over the closest prior art (here: silicon-germanium). However, this difference is not one which can legitimately be invoked in support of inventive step.

The problem-solution approach presupposes that the skilled person has a purpose in mind from the very beginning of the inventive process, which in this case is the manufacture of a known type of semiconductor substrate comprising a silicon-germanium film. Within this conceptual framework, it cannot be logically argued that the skilled person would find no motivation to incorporate silicon-germanium. Moreover, an argument that it would not be straightforward to incorporate this difference into the teaching of the document considered to be closest prior art, or that this would require more than common general knowledge, would not, in such a case, constitute an argument in favour of inventive step, but rather an argument that this document is not in fact a promising starting point (Reasons, point 4.1).

Mediation Rules of the UPC Patent Mediation and Arbitration Centre

Permanent Arbitration Tribunal The Hague 1899

The Mediation Rules of the Patent Mediation and Arbitration Centre annexed to the UPC have now been published by the Preparatory Committee here.

There have been some doubts whether parties seeking mediation service would be inclined to travel to Lisbon or Ljubliana for this purpose rather than staying in their comfort zone in Paris, London or Munich. Art. 9 of the Rules now leave a broad choice to the parties. The parties and the mediator might even decide to enjoy a retreat in the Caribbean and this blogger is sure that this would help finding a friendly settlement.

One of the many benefits of mediation besides of the confidentiality is the broader and more flexible scope. According to Art. 35 (2) of the UPC agreement, the facilities shall be provided for mediation and arbitration of patent disputes falling within the scope of this Agreement, i.e. subject-matter for which the UPC has exclusive jurisdiction. Parties might want to settle other issues as well (say trademark rights or the right to custody of a commonly owned dog). The rules can be broadly interpreted in this regard. Art. 2 No. 1 of the Mediation Rules say that the services are offered for disputes relating to European patents and European patents with unitary effects for which the Unified Patent Court (UPC) is exclusively competent (Article 32 UPC Agreement).  In other words, any relation to a patent under the UPC competence is sufficient.

Art. 3 2. c) of the rules stipulates that the request for mediation shall contain a succinct summary of the facts giving rise to the dispute including an indication of the intellectual property rights involved. This can be interpreted as meaning that the dispute may involve intellectual property rights other than the patent under the UPC competence but does not limit the competence of the Mediation Centre to intellectual property rights. The right to custody of a commonly owned dog may well be treated.

Would the mediation be available for these issues as well and would the terms of such a settlement be enforcible under Art. 82 UPC and Rule 11.2 of the UPC rules of Procedure? The answer should be yes. Art. 11.2 of the UPC Rules of Procedure applies to the terms of any settlement and is not limited to subject-matter under the jurisdiction of the UPC.