The assessment of inventive step from a German view requires that the person skilled in the art not only has a motivation to modify or adapt the relevant prior art, but also that there is an appropriate suggestion or hint towards that claimed subject-matter.
In its decision "Liquid Supply Devices" (Flüssigkeitszufuhrgerät; X ZR 33/22), it was confirmed by the Court that the solution to a technical problem is not obvious merely because the skilled person has the necessary skill and/or expertise to implement appropriate changes to the relevant embodiment of the prior art. In addition, it also requires that the prior art provides a suggestion for changing said art accordingly. This emphasizes the importance to explain suggestions, incentives, or other reasons of the prior art, which motivate the skilled person to consider a specific solution and/or technical feature.
Finnegan Counsel Jonathan J. Wurth summarizes the takeaways from the recent decision.
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