Friday, June 7, 2013

Golden Bonus Doctrine in Germany

A few weeks ago I posted about the "golden bonus" doctrine as it was applied in the US COMBIGAN decision. This doctrine says that if an invention is obvious for one reason, it does not become non-obvious merely because it has some non-obvious benefits (the "golden bonus"). This recent post on the Kluwer Patent Blog discussing the Bundesgerichtshof descision in Kosmetisches Sonnenschutzmittel III (X ZR 72/08), indicates that the same doctrine applies in Germany, though couched in European problem-and-solution terms. According to the blog post (unfortunately, I don't read German), the decision held that even if the invention is an inventive solution to the problem the inventors sought to address, it will be obvious if it is an obvious solution to a different problem which a skilled person would also be motivated to address. The post goes on to suggest that the more recent BGH decision in Trenn-Erderschalter (X ZR 160/11) casts some doubt on that holding, but so far as I can tell (again from the Kluwer blog post), the Trenn-Erderschalter decision simply said that the alternative problem itself was not obvious, and so even if its solution was obvious, it would not render the invention obvious.

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