It is established practice that for judging the inventive step of the invention claimed, the problem-solution approach as developed within the European patent office is used.
In this approach it is deemed that the claimed invention adds an extra feature in respect of the closest prior art. This additional feature defines the problem to be solved by the person skilled in the art. Starting from the closest prior art and facing the problem to be solved, the skilled person has to find a technical solution for the problem. Whether or not he can do so, is part of the inventive step discussion.
In a recent decision (Bussink vs. KMG) the Court in The Hague has given its own view on the definition of the problem to be solved. In the case at hand, Bussink is the proprietor of a European patent concerning a fair carrousel comprising an arm that swings 360 degrees around a horizontal axis. At the end of the arm a passenger seating facility is mounted. The passenger seating facility is rotatable with respect to the arm, and the seats in the seating facility are hingedly mounted.
Parties agreed on D1 as the closest prior art, which was also acknowledged in the patent. D1 shows a swing arm with rotatably mounted seats at its end. The patent description gives as an object of the invention to the person skilled in the art to ‘increase the attractiveness’ of the carrousel. According to KMG however, this cannot be the problem to be solved, since it is not a technical problem. The Court follows this in its decision and defines a different problem: to provide movement in a third dimension. The technical solution to the problem is provided by the invention claimed.
Persons skilled in the art are since long known to provide technical solutions for non-technical problems, such as ‘producing more cost effectively’, ‘providing a more attractive appearance’, etc., whether or not involving an inventive step. It seems that the Court in the Hague now limits the person skilled in the art to only solve technical problems.