Nonobviousness in German Patent Nullity Proceedings

In Germany, the Federal Patent Court (Bundespatentgericht) has exclusive jurisdiction on actions aiming at the revocation of a patent. This is true not only for national German patents, but also for the German part of a European ‘bundle of patents.’ The main ground on which such actions are based is the lack of an inventive step, in other words the lack of the requirement that that the patented invention was not obvious to a person skilled in the art. The decisions in these nullity proceedings are subject to an appeal to the Federal Supreme Court (Bundesgerichtshof). This paper in honor of Professor Straus shall give an impression on how the two German courts, in deciding patent nullity matters, handle this central notion of nonobvious-ness. Special regard will be given to the following questions:

• Are the standards in determining nonobviousness in the German Courts divergent from those in the European Patent Office?

• Can the burden of proof help to solve the difficult question of nonobviousness?

• Should the actual power of control of the Federal Supreme Court be restricted?