UPC: Rethinking inventive step

As litigation before the Unified Patent Court (UPC) continues to gather pace, recent decisions of the UPC Court of Appeal are defining how core patentability issues will be assessed in this forum. One of the most important of these is inventive step. Whilst being a concept familiar to all patent practitioners, it is subject to a distinct and developing UPC methodology.

This article summarises the UPC’s emerging approach to inventive step, highlights where it differs from the EPO framework, and considers how these differences may affect patent drafting, prosecution, and litigation strategy before the UPC.

A new UPC framework for assessing inventive step

Following two significant decisions of the Court of Appeal (Amgen v Sanofi and Regeneron (UPC_CoA_528/2024) and Meril v Edwards (UPC_CoA_464/2024), a new framework for establishing inventive step before the UPC has emerged. Significantly, the newly confirmed approach of the UPC has key differences to that of the problem-solution approach applied by the European Patent Office (EPO).

The newly formed UPC approach to inventive step can be summarised in three main steps.

1. Determine the objective problem of the invention

This first step is to identify the objective problem from the perspective of the skilled person. This takes into account their common general knowledge at the effective date of the patent, and is directed to determining “the inventive concept underlying the invention”. The claim must be considered as a whole and in the context of the description and drawings, as opposed to piecemeal analysis of individual claim features.

This represents a significant departure from the EPO’s problem-solution approach, whereby the formulation of an inventive step attack is based upon identifying features distinguishing a claim from the closest prior art (CPA), and defining the technical effect of said differences. The UPC’s approach is more flexible, allowing for a potentially broader definition of the “objective problem” of the invention. Interestingly, this first step adopts the more “holistic” inventive step test applied in the UK (the Windsurfer/Pozzoli test), whereby the first step requires the inventive step concept to be construed before turning to the relevant prior art.

2. Determine the most “realistic starting point” in the state of the art

The next step is to identify one or more realistic starting points. A starting point is considered realistic “if the teaching thereof would have been of interest to a skilled person who, at the relevant date, wished to solve the objective problem”. Here, there are parallels with the EPO problem-solution approach. For example, a realistic starting point may be selected because it solves the same or similar problem to the prior art, or that the prior art shares several features with the claimed invention.

However, the Court of Appeal has emphasised that the UPC approach allows more than one realistic starting point and that the claimed invention must be inventive starting from each of them. This contrasts with the EPO’s “single, most promising starting point” (although it is possible at the EPO for multiple “closest” prior art documents to be used in separate inventive step arguments). As a result, UPC inventive step arguments that focus heavily on disrupting the choice of CPA inevitably carry less weight that they would before the EPO.

3. Determine if the claimed solution was obvious in light of steps 1 and 2

The final step assesses whether, starting from the identified realistic starting point or points and in view of the defined objective problem, the claimed solution would have been obvious to the skilled person.

The Court of Appeal decisions state that “As a general rule, a claimed solution must be considered not inventive/obvious when the skilled person would take the next step prompted by the pointer, or as a matter of routine, and arrive at the claimed invention”.  Note that emphasis has been placed on the term “would”, mirroring the established EPO approach whereby technical feasibility is not sufficient to deny an inventive step.

Indicators of obviousness include a clearly predictable next step, or where there is a reasonable expectation of success. What constitutes “a reasonable expectation”is considered on a case-by-case basis with less explored technical fields of research having a lower expectation of success. Whilst practical or technical considerations play a role, the Court of Appeal has observed that costs involved in testing whether the desired result will be obtained when taking a next step may be a factor in withholding the skilled person from taking that step. This introduces an additional and potentially powerful line of argumentation for patentees contesting obviousness at the UPC.

Practical implications

The two Court of Appeal decisions have confirmed that the UPC has established its own distinct, and more flexible, assessment of inventive step, departing significantly in some respects from the EPO problem-solution approach that many patent proprietors are accustomed to applying.  Whilst the ultimate conclusion on inventive step may still align across European jurisdictions, it is important to be aware that different inventive step frameworks exist and therefore that certain arguments may be more persuasive. An IP strategy that considers those different approaches can reduce the related potential problems and derisk a patent portfolio.

For patent applicants contemplating future enforcement before the UPC, proactive steps can be taken at the drafting stage. For example, the application description can be structured to support multiple inventive step approaches: identifying technical effects associated with specific claim features (as favoured by the EPO), while also articulating, at a higher level, the overall inventive concept of the invention in terms that may resonate more strongly with the UPC framework.

Advanced planning is therefore key to building a robust IP portfolio that can withstand scrutiny in both prosecution and litigation.

To discuss your IP strategy or the implications of recent UPC decisions for your portfolio, please contact us at gje@gje.com.