Lawyer Monthly Magazine - March 2020 Edition

Dr Andreas Peters Legal Game Changers Dr Andreas Peters, Hannke Bittner & Partner What constitutes legal proof of invention? In terms of protectability, one that maintains a higher intellectual “performance”, than another person skilled in the art, is capable of filing a patent application; this has been the case since the end of the 19th century. With entry via Art. IV No. 4 introduced § 2a Patent Act (now § 4 Patent Act) regarding the laws devised at the International Patent Convention from 21 June 1976, a codification of an inventive step for patent law occurred for the very first time: an invention ought to involve an ‘inventive step’, in case the idea is not rendered obvious by a person skilled in the art. As a matter of fact, nothing constitutes towards “legal proof” of an invention in German Patent Law nor in European Patent Law, but rather, we have to address the question when an ‘inventive step’ in a patent claim has been reached. The assessment of an ‘inventive step’ is a question of law which is to be judged via an evaluative appraisal of the factual circumstances which are directly or indirectly capable of indicating the conditions of the inventive step. The other way around, to show "non- inventiveness" of the applied subject matter, the person skilled in the art needs impulses, suggestions, hints or other reasons, to end up on the subject matter claimed by the patent application in an obvious way. In order to prove the invention as belonging to the ‘state of the art’, it is We hear from Dr Andreas Peters, where he touches on patent law and the process behind proving your invention came first in legal proceedings. The known facts according to the state of the art, requires that the expert must have a cause or suggestion to get to a proposed solution. Dr Andreas Peters Senior Partner Hannke Bittner & Partner Patent- und Rechtsanwälte mbB Prüfeninger Straße 1 93049 Regensburg Deutschland www.hannke-patent.de mail@hannke-patent.de Telephone 0941 – 58 62 09-0 required that the person skilled in the art is able to use their obtained knowledge and aptitude that they collected during their education and vocational experience to prove they could have developed the solution in an obvious way (meaning of the subject matter being applied a patent for). However, this solely is not sufficient; the inventor needs to have a reason why they chose that particular path/ solution to end up on the subject matter being applied for. To what extent the person skilled in the art requires a ‘state of the art’ suggestion to further develop a known solution in a (pre)-determined way, is a question which must be evaluated in the light of the circumstances of each individual case, which requires an answer regarding a general overview of all predominant elements of fact. In such cases, explicit references are significant for the person skilled in the art. When legal proceedings arise in this area, what evidence is needed to prove who invented the invention first? By the time of the application of the 76 WWW.LAWYER-MONTHLY.COM | MAR 2020 How Do You Prove Your Invention Came First?