04/12/2025
In a key development at the UPC, two recent decisions of the Court of Appeal have set out the framework for assessing inventive step. Decisions Amgen v Sanofi and Regeneron (UPC_CoA_528/2024) and Meril v Edwards (UPC_CoA_464/2024) both set out a cogent framework for how inventive step should be assessed.
UPC framework
The UPC framework for assessing inventive step can be summarised as follows:
- Determine the objective problem;
- Determine the realistic starting point;
- Consider whether the skilled person, starting from the realistic starting point, and wishing to solve the objective problem, would (and not only: could) have arrived at the claimed solution.
Both decisions set out some detailed guidance on how each step should be approached. While there are perhaps similarities to the EPO problem solution approach, the UPC framework has some key differences.
Objective problem
The first step is to determine the objective problem. This is assessed from the perspective of the skilled person with their common general knowledge, and at the effective date of the patent. The Court of Appeal stresses that this is done by considering what the “invention adds to the state of the art”, not by looking at the individual features of the claim but by comparing the claim as a whole in the context of the description and the drawings while also considering the inventive concept underlying the invention.
So in formulating the objective problem, the UPC takes a broader and more encompassing approach, as compared to the regimented and formulaic approach taken by the EPO. In the problem solution approach, the claimed invention is compared to a single “closest prior art” document to determine the distinguishing feature. The effect associated with this distinguishing feature is then used as the basis for formulating the objective technical problem.
On the other hand, the UPC is more broadly considering the technical effects underlying the claim and the contribution this makes to the state of the art. Interestingly, this does suggest that the court will need to have an understanding of the prior art. However, it does not suggest a feature by feature comparison with a single document, as is the case in the EPO problem solution approach.
The Court of Appeal does not provide further guidance on how to determine “what the invention adds to the state of the art”. Thus, it is not clear whether this involve a consideration of the general teaching in the prior art, or whether this should be assessed from the perspective of a single document. I am sure this question will be answered in future judgements.
The Court of appeal also confirms that the objective problem should not contain pointers to the claimed solution, and the Court of Appeal explicitly illustrates this point in the Amgen case.
Interestingly, the UPC approach has clear parallels with the UK framework (Windsurfing/Pozzoli), which includes a step of identifying the inventive concept of the claim before consideration of the prior art.
Realistic starting point
The realistic starting point is a piece of prior art including teaching that is of interest to the skilled person wishing to solve the objective problem. This could be a piece of prior art that discloses some features in common with the claimed invention and/or addresses a similar underlying problem to the claimed invention.
The court stresses that there may be more than one realistic starting point and that the claimed invention must be inventive starting from each of these.
Again, this is a more flexible approach than the EPO problem solution approach, in which only a single closest prior art document should be considered in the analysis.
Obviousness
The Court of Appeal sets out that the skilled person has no inventive skill and no imagination, and requires a pointer or motivation to take steps from the realistic starting point towards the claimed invention. The court goes on to explain that as a general rule, a claimed solution is obvious when the skilled person would take the next step prompted by a pointer or as a matter of routine, to thereby arrive at the claimed invention. The court’s approach here feels fairly typical of how obviousness is assessed within Europe.
The court of appeal also explains that a claimed solution is obvious if the skilled person would have taken the next step in expectation of finding an envisaged solution to the objective problem. This would be the case when the results of the next step were predictable or where there was a reasonable expectation of success. In the Amgen decision, the doctrine of reasonable expectation of success is explored further.
In the Meril decision, the Court of Appeal also makes it clear that for an inventive step, it is not necessary to show improvement of the technical teaching, defined by the claims, over the prior art. Inventive step may also be found if the patent claims disclose a non-obvious alternative to solutions known in the prior art. Such a situation is also a possibility before the EPO.
Conclusion
These decisions of the Court of Appeal provide some welcome guidance on how inventive step is assessed by the UPC. In my view, the UPC’s approach provides a more flexible and holistic approach as compared to the EPO problem solution approach. In particular, the framing of the objective problem feels less circular and less rigid. Interestingly, there are some parallels with the approach that the UK takes (Windsurfing/Pozzoli), in which the inventive concept of the claim is determined before consideration of the prior art.
Finally, earlier this year, I wrote about the first instance decision in Amgen V Sanofi and how the EPO Opposition division had diverged from UPC local division. In terms of the overall conclusion on inventive step, the UPC is now aligned with the EPO opposition division. It will be interesting to see how the Technical Board of Appeal decide on inventive step. A decision is expected in that case next year.
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This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
