Brilliant ideas and inventive step

03-10-2016

Michiel Rijsdijk

A rusk is an essential part of a typical Dutch breakfast. But before you can eat it, it’s a big challenge to get it out of its tight wrapper without the brittle product falling apart.

Fortunately there is a solution for this annoying problem: a cut-out at the edge of the rusk to enable you to remove it in one piece. This is a brilliant invention for those regularly finding a plate full of broken rusk.

Is this solution too obvious to be patented? That question was the subject of a recent matter before the District Court of The Hague, concerning a patent for biscuits with cut-outs.

A patent in the Netherlands is not subject to preliminary examination. Therefore the Dutch Patent Office (DPO) provides the possibility to ask it to advise on nullity grounds in respect of a previously granted Dutch Patent (Article 84 of the Dutch Patent Act [DPA]). If a positive outcome is advised it regularly serves as the basis of a subsequent nullity claim.

In this matter, the DPA provided advice under article 84 in respect of the patent, NL 1012379 (‘379). Filed in 1999, the patent concerned “flat, brittle products such biscuits having cut-outs to act as finger holds to aid their extraction from a tight wrapper”.

The DPO considered that the skilled person would find evidence of prior art in US patent, US number 4124727 (‘727). The patent shows a cylindrical packaging with a stack of deep-fried snacks with a cut-out in the middle, as prior art.

"a skilled person would not use a patent on fried vegetable chips in the quest for a solution to the objective problem concerning rusks in a tight wrapper."

It further considered that the skilled person, when confronted with this cut-out in the middle, would observe that any topping put on the rusk would fall through. According to the DPO, the skilled person would then come, without any innovative work, to the solution of relocating the cut-out to the edge. The DPO therefore considered the patent to lack inventiveness.

Subsequently the plaintiff in the court case, Continental Bakeries (CB), claimed the patent should be nullified due to lack of inventive step, stating that the claimed solution was obvious for the skilled person.

However, the decision of the court deviates from the earlier advice of the DPO. On July 27, 2016 The Hague court ruled that the cut-out as claimed may seem simple at first sight, but demonstrates an inventive step.

The court applied the so-called “problem-solution approach” in order to assess the inventiveness. It considered the prior art mentioned by CB, including the ‘727 patent.

According to the court, the closest prior art does not give a hint to come to the solution as shown in the ‘379 patent. Other bakery products which have a cut-out on the edge are not packed in a tight wrapper. Moreover, nowhere in the prior art does it say that the cut-out on the edge exists to aid the extraction of the product from the packaging.

According to the court, the skilled person who is searching for a solution to get the biscuit out of a tight wrapper, does not come to the patented invention when reading the prior art.

The court also stated that a skilled person would not use a patent on fried vegetable chips in the quest for a solution to the objective problem concerning rusks in a tight wrapper. Reference to the ‘727 patent is therefore based on hindsight.

In summary, at first sight it seems that the invention is extremely simple. Yet, the court ruled that the solution concerns an inventive step. As is shown, an invention need not be something complicated in order to get a patent on it.

Many inventions are seemingly extremely simple—one just had to make the inventive step to get to that brilliant solution.

Michiel Rijsdijk is a partner at Arnold + Siedsma. He can be contacted at: mrijsdijk@arnold-siedsma.com

Michiel Rijsdijk, Arnold + Siedsma, Dutch Patent Office, patent, Continental Bakeries, District Court of The Hague,

WIPR