LEGAL DECISIONS

20.04.2021: Registered design as starting point for examination for inventive step

In the case of the patent in dispute (dental implant), which was declared invalid in patent revocation proceedings, one of the issues was whether the publication of a registered design can be considered as a starting point in the examination for inventive step.

The BGH concludes that published designs - as well as other pictorial representations and illustrations - may be considered as a starting point for considerations of inventive step if the pictorial representation (directly and unambiguously) reveals technical relationships or functions.

Indeed, the concept of prior art is not limited to patent literature, but includes "anything which has been made available to the public by written or oral description, by use or in any other way before the filing date of the European patent application" (Art. 54(2) EPC).

Practical tip:

It is advisable to also consider design publications, among other things, as part of preliminary searches and to include these more strongly in the strategy considerations.

In particular, it can also be useful to request a so-called deferred publication for design applications if there are indications that the technology of the product also still offers potential for patent or utility model protection.

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