Patent protection requires an invention based on an inventive step (Article 52 EPC, Section 1 German Patent Act). An invention is deemed to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art (Article 56 EPC, Section 4 German Patent Act). With its recently published decision “Kinderbett” (children's bed) the German Federal Court of Justice (FCJ) reversed a patent invalidation pronounced by the Federal Patent Court and defined the requirements for assuming an inventive step in more detail. This is important guidance for plaintiffs in German patent invalidation proceedings as the burden of proving lack of inventiveness in such proceedings is on them.

According to the case law of the FCJ, the concept of inventive step involves a legal assessment, which is subject to a full review of the courts. This assessment is based on the average knowledge, experience and skills of the person skilled in the art and the state of the art at the time of the priority date. A finding of obviousness requires two things: First, the person skilled in the art must have been able to develop the solution of the technical problem based on his knowledge and skills acquired through his education and professional experience. Second, the skilled person must be motivated to follow the path of the invention. This motivation usually requires impulses, suggestions, notes or other inducement beyond the mere findability of the technical problem. (FCJ, decision from 20. December 2011, X ZM 6/10 - Installiereinrichtung II [Device for installing II], GRUR 2012, 378, 379)

The extent and the level of detail of the motivation required depends on the circumstances on the case. A reliable assessment is difficult, it needs to take into account all relevant facts. The FCJ has defined principles of this assessment in order to make decisions predictable. In particular, the FCJ has repeatedly addressed the question of when common general knowledge of the skilled person can constitute an inducement for the use of this knowledge, including in two other recent decisions.

In its decision “Airbag-Auslösesteuerung” (airbag release control) the FCJ ruled that the mere existence of a piece of common general knowledge is not sufficient. Even if the person skilled in the art is familiar with a technical subject as a part of the common general knowledge, this will not in itself prove that it was obvious for a skilled person to make use of this knowledge when solving a specific technical problem (FCJ, decision from 30. April 2009, Xa ZR 56/05, GRUR 2009, 743, 745 paragraph 37).

In its subsequent decision “Farbversorgungssystem” (paint supply system) the FCJ clarified that an inducement to use a technical solution may be present if a general technical solution is relevant for a variety of applications and if that general technical solution forms part of the skilled person’s common general knowledge. The FCJ emphasized that there do not need to be concrete examples for the application of this solution as long as the use of the general technical solution in the context at issue is objectively appropriate and no special circumstances make this use impossible, difficult or otherwise infeasible (FCJ, decision from 11. March 2014, X ZR 139/10, GRUR 2014, 647, 649 paragraph 26).

With its recent decision “Kinderbett” the FCJ confirmed that the general suitability of a technical solution which forms part of the common general knowledge can be sufficient as an inducement for its use. However, the FCJ also pointed out the additional requirement that a person skilled in the art will readily assume a technical starting point that makes the technical solution at issue appear to be objectively appropriate (FCJ, decision from 27. March 2018, X ZR 59/16, GRUR 2018, 716, 718 paragraph 29). Accordingly, the common general knowledge can render a technical solution obvious only if it is apparent to the skilled person that the use of this knowledge is objectively appropriate for solving the specific technical problem.

Thus, proving the lack of an inventive step requires more than just showing that the knowledge relevant for the inventive solution belongs to the common general knowledge. Rather, it is necessary to show that it was easily apparent that the use of this common general knowledge provides an objectively appropriate solution. Even though this clarification does not deviate from the FCJ’s prior case law significantly, it is helpful guidance and shows that the existence of a wide-ranging common general knowledge – as sometimes assumed by the Federal Patent Court – may not be sufficient to invalidate a patent.