The German Federal Supreme Court clarifies the “problem” underlying an invention

In a decision dated January 13, 2015 (X ZR 41/13) “Quetiapin” the German Federal Supreme Court deals with the “problem” underlying an invention. According to the case law of the German Federal Supreme Court, one does not necessarily have to rely on the “problem” as it is outlined in the patent description when examining an invention. Rather, it has to be determined what the invention in fact achieves with regard to the state of the art. Because the definition of the “problem” underlying an invention does not have the purpose to come to a preliminary decision as to the question of an inventive step, elements forming part of the solution must not be taken into consideration. Likewise, it is not appropriate to presume that it was obvious for a skilled person to deal at all with a certain technical “problem”. Furthermore, it is not appropriate to examine for the purpose of a definition of the “problem” suggestions which the state of the art provides. Rather, the technical “problem” must be formulated in a broad and neutral way such that the question of suggestions deriving from the state of the art is only asked in its proper context namely the examination of an inventive step.