Some learnings from the Zurich IP Retreat

The blue elephant in the room
The blue elephant in the room

If you missed the Zurich IP Retreat last weekend, you really missed a lot. I trust there will be some kind of conference proceedings later on, but you will only catch a glimpse of all the fruitful discussions on the various aspects of hindsight that we had on the spot.

The blue elephant will constantly remind me of hindsight issues …

I noted two points of specific concern for proceedings at the Swiss FPC that I want to share with you:

  1. Closest prior art

It is not uncommon (to say the least) that one party in nullity proceedings is not in agreement with the selection of the ‘closest prior art.’ Mr Brändle made it perfectly clear how this is dealt with at the FPC:

If there are several valid starting points (and everything that cannot be excluded right away is ‘valid’) we look at every single one, and don’t even raise the issue of the closest one. If the patent is found to be obvious over any one of the pieces of prior art, we stop right there. And there is – very important – no room for the argument ‘you did not start from the closest prior art’.

Mr Brändle referred to decisions 138 III 111 (r 2.2) of the Supreme Court and O2013_011 of the FPC in this respect. In sum,

[t]here is absolutely no use to fight over the question which of the prior art brought forward to show lack of inventive step is the closest one. We will look at all of them, unless already one of them renders the invention obvious, which then is the end of the case.

  1. The skilled person’s knowledge – at which point of time?

The knowledge of the skilled person may change over time. Some discussion evolved around the relevant point of time in the assessment of infringement. The skilled person’s knowledge and understanding is relevant e.g. for both the second and third question in the typical assessment of equivalents (see the detailed discussion of the questionnaire on this Blog here).

Mr Brändle emphasized that the FPC relies on the skilled person’s knowledge at the point of time of the infringement in its assessment of infringement.

Reported by Martin WILMING

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