The choice of the starting point for evaluation of inventive step requires a justification which is not in itself provided by the fact that a certain citation proves ex post to be the “closest state of the art”. In particular, it cannot be assumed without further ado that an expert in a technical field in which a large number of current construction solutions exist will fall back on a significantly older state of the art while ignoring these newer solutions.
Case date: 10 January 2017
Case number: X ZR 57/14
Court: Federal Court of Justice of Germany
A full summary of this case has been published on Kluwer IP Law.
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Could § 40 of the decision be interpreted in such a way that the BGH is of the opinion that the determination of the closest prior art is an action which could be considered as ex-post facto?
What is interesting is that the BGH says that in presence of much more recent documents, why would the person skilled in the art refer to older documents, even if they are a better match for the claim.
The decision of the BPatG, which took into account this older document was thus not endorsed.
Yes, the determination of the closest prior art document is (almost) always made ex post and with the benefit of hindsight, which is one of the key reasons, IMHO, why the BGH does not like this approach.