The abysses of the problem-solution approach
In a recent decision (133R138/19w
), the Vienna Higher Regional Court deals with the correct application of the problem-solution approach in the assessment of inventive step. The starting point was a dispute between beekeepers about whether a mite control apparatus or a process carried out with it infringes an Austrian patent. In this process, honeycombs containing the bee brood are heated to a temperature range of 39 to 42 degrees Celsius at a relative humidity of at least 70%, which results in the bees just remaining unharmed, while the more temperature-sensitive mites are killed.
During nullity proceedings, the first instance upheld the claims drawn to the mite control apparatus. The appellate court concluded that although the Nullity Department arrived at the correct result, it had misapplied the problem-solution approach for assessing inventive step. In particular, it had inadmissibly mixed the objective technical problem with its solution.
While this is in line with the established case law of the Boards of Appeal of the EPO, the Higher Regional Court deviates from it in another point: In assessing inventive step, it reads features that are only contained in the description into the apparatus claim – in the present case, the temperature range of 39 to 42 degrees Celsius and the relative humidity of at least 70%.
Matthias Brunner, IP attorney in our firm, critically comments on the decision of the Vienna Higher Regional Court in this contribution
for "ÖBl", issue 1/2021.