The UPC’s approach to assess inventive step – a new approach reflecting the German practice?

The assessment of inventive step is a cornerstone of patentability within the European patent system. Consequently, understanding the criteria that the Unified Patent Court (UPC) applies in evaluating inventive step is of significant importance to the patent community. On the one hand, one may assume that the UPC would adopt the same criteria as the European Patent Office (EPO), which originally granted the European patents. On the other hand, the UPC has the autonomy to develop its own criteria and establish an independent body of case law.

1. General considerations

After the first 18 months of the UPC’s operation, several decisions have been published that provide detailed insights into the assessment of inventive step. This article examines four key UPC decisions that relate to assessment of inventive step, analyzes the criteria applied, and derives principles for addressing inventive step in proceedings before the UPC.

The Unified Patent Court Agreement (UPCA) does not contain substantive provisions regarding inventive step assessment but instead refers to specific sources of law in Article 24(1), which states: “(a) Union law; (b) this Agreement; (c) the EPC; (d) other international agreements applicable to patents and binding on all the Contracting Member States; and (e) national law”.

Accordingly, for the assessment of inventive step, the UPC has three potential approaches: (i) adopt or adapt the practice established by the EPO, (ii) adopt or adapt the practices of one or more Contracting Member States, or (iii) develop a new framework. It was anticipated that the UPC would adopt a combination of these approaches yet leaving the ultimate outcome open.

2. UPC_CoA_335/2023, 26 February 2024 (Nanostring/10x Genomics II)

– Court of Appeal, infringement and revocation preliminary measures

This decision is arguably the most significant UPC ruling to date, as the Court of Appeal (CoA) provides detailed positions on several fundamental concepts, including claim construction, novelty, and the assessment of inventive step.

Rather than identifying the closest prior art (as in the EPO approach) or identifying a starting point (as in the German approach), the UPC identifies in this decision a piece of prior art that “would have been of interest to a person skilled in the art who, at the priority date of the patent at issue, was seeking to develop […].” This criterion of “being of interest” appears to emphasize a comparable objective or purpose, rather than simply identifying the prior art with the highest number of identical technical features.

In the next step, the UPC evaluated whether, at the priority date, there was “a need to consider […]” whether the teaching of the prior art could be applied or transferred. Accordingly, the UPC looks for “an incentive or confirmation for thinking in this direction, resulting from an indication” in the relevant prior art. In other words, the question becomes whether there is an incentive or confirmation to pursue a specific direction when faced with a particular need.

In this context, it has been assessed whether there is a reasonable expectation of success. In this context the CoA stated: “the Applicants’ objection that there was no reasonable expectation of success from a technical point of view because they would have been confronted with problems […] cannot be accepted either“.

As a next step, a potential “technology” transfer is to be evaluated: “that for a person skilled in the art at the priority date of the patent at issue, after successful application of an […] for the detection of […], the next step was to consider transferring the method to […]”.

The UPC approach derivable from this decision may be summarized by the following steps:

i) Is there a specific need for improvement?

Such a need may be derived from the patent in suit.

ii) Which piece of prior art would be of interest for the skilled person?

iii) Is there an incentive/confirmation for thinking in this direction?

Said incentive/confirmation for thinking may be derived from the prior art of interest.

iv) Is there a reasonable expectation of success?

It is to be evaluated, as a next step, if a “technology transfer” would be obvious.

This approach appears to align more closely with the German approach than with the EPO’s “problem-and-solution approach.” Firstly, the concept of prior art “being of interest” resembles a starting point rather than a closest prior art document. Furthermore, the “need” is derived from the patent in suit as a whole, rather than being tied to a specific technical feature representing the difference between the claim and the identified prior art.

3. UPC_CFI_1/2023, 16 July 2024 (Sanofi-Aventis/Amgen)

– Central Division Munich, isolated revocation action

In contrast to the decision identified above, the Central Division defines the criteria for assessing inventive step in the headnotes of the decision, specifically:

“The assessment of inventive step starts from a realistic starting point in the prior art. There can be several realistic starting points. It is not necessary to identify the “most promising” starting point”. Thereby, the concept of the closest prior art seems to be excluded. This step would correspond to identifying a piece of prior art being of interest for the skilled person.

“In general, a claimed solution is obvious if the skilled person would be motivated to consider the claimed solution and would implement it as a next step in developing the prior art. It may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s)”. Thus, the question is asked, if there is a motivation to implement a technical solution as a next step, corresponding to “an incentive/confirmation for thinking in this direction”.

“The absence of a reasonable expectation of success (or more in general: non-obviousness) does not follow from the mere fact that other ways of solving the underlying problem are also suggested in the prior art and/or (would) have been pursued by others. The decisive question that has to be answered is whether the claimed solution is non-obvious”. The question is asked and evaluated, if there is a reasonable expectation of success, hereby expected difficulties and technical advantages are relevant.

Like in the decision above, the “need” is derived from the patent as a whole, not from a technical difference between claim and prior art.

4. UPC_CFI_315/2023, 5 November 2024 (NJOY/Juul Labs)

– Central Division Paris, isolated revocation action

This UPC decision leans slightly more toward the EPO’s “problem-and-solution approach.”

While acknowledging that “the closest prior art generally bears the risk of introducing subjective elements into the evaluation,” the UPC notes in this decision that “for reasons of procedural efficiency, it may be justified in a particular case to focus the debate on a certain element or certain elements of the prior art.” Thus, selecting a closest prior art is not entirely excluded in this decision.

The UPC further states that the patent does not specify a problem here and the problem is actually derived from the technical difference between the claim and the prior art instead. According to the UPC, an inventive step present in this case, is justified by: “what is claimed as an invention hence did not follow from the prior art in such a way that the skilled person would have found it in his attempt to solve the underlying problem […] on the basis of its knowledge and skills”.

This decision highlights that, potentially in specific cases, a modified problem-and-solution approach may be applicable.

5. UPC_CFI_54/2023, 22 August 2024 (Avago/Tesla)

– Local Division Hamburg, infringement and revocation action

This UPC decision applies the German approach and in parallel the EPO’s “problem-and-solution approach”. Interestingly, the UPC concludes that in this case both approaches would lead to the same outcome.

6. Conclusion

From these decisions, the following principles may be derived:

-the UPC does generally not apply the “problem-and-solution approach” of the EPO.

-the UPC rather seems to apply a modified German approach.

-the UPC applies new concepts such as piece of prior art “being of interest”, “an incentive/confirmation for thinking in this direction”, and “as a next step, consider transferring” (technology).

Given that the UPC decides on the validity of European patents, one might have initially assumed that the UPC would apply the same criteria as the granting authority, namely the EPO. However, the UPC appears to have adopted its own approach to assessing inventive step – one that diverges from the EPO approach and rather shows similarities to the German practice.

It is crucial for applicants and patentees to understand the criteria applied by the UPC when assessing the validity of a European patent. These criteria will not only have to be applied in infringement and revocation proceedings before the UPC but must also be considered during the grant procedure at the EPO. When formulating the “problem-and-solution approach” during EPO proceedings, one already has to consider whether the reasoning will align with the UPC’s approach to inventive step as well.

7. Take-away

Overall, it is a welcome development that claimants and defendants now have an initial indication of how the UPC approaches the assessment of inventive step. These early impressions should be carefully considered in preparing for future proceedings. However, as the UPC’s practice continues to evolve, it would be prudent to include multiple lines of argumentation regarding inventive step in submissions before the court – for instance, aligning with established EPO practice, relevant national approaches, and the emerging UPC framework. Moreover, the developing UPC practice should also be taken into account already during the prosecution of European patent applications before the EPO.