Strong confidence in Unified Patent Court’s assessment of inventive step

Intellectual property professionals tell us they are confident in how the Unified Patent Court (UPC) will assess inventive step.

According to our recent poll, when asked about inventive step and whether they were confident that the UPC will assess it correctly, the majority agreed. Nearly two thirds of respondents expressed having confidence in the UPC’s assessment of inventive step.

This is our latest finding from the poll we conducted last month amongst the 120-strong audience of IP professionals, both from in-house teams and attorney firms, who joined our webinar on the UPC and its decisions so far.

The UPC has been in operation since June 2023, and many consider the system to be a viable alternative to the use of national courts for patent litigation in Europe, particularly if there are infringements in multiple jurisdictions.

Commenting on this finding and the levels of confidence displayed, Matthew Howell, partner and representative before the UPC, said:

“The fact that 62 per cent of our respondents, a clear majority, are confident that the UPC will come to the right conclusion on inventive step, is a testament to the high quality of the court’s decisions and the diligent approach taken to explaining the reasoning behind its findings, both for and against the presence of an inventive step.”

“What is perhaps most surprising about this result is that this level of confidence persists even though the UPC has, in its decisions to date, diverged from the European Patent Office’s tried and trusted “problem-solution” approach to assessing inventive step.”

When contemplating the proportion of audience members who disagreed, Matthew said this:

“This is perhaps a factor for those of our respondents who are not confident that the UPC will come to the correct answer on inventive step.”

When surveyed, over a third of respondents – 38 per cent – did not share the same level of confidence in the UPC’s assessment of inventive step as their fellow audience members.

One point Matthew made was:

“As we become more familiar with the UPC’s approach to this key aspect of validity, we will likely see user confidence increase further, provided the court continues to provide the level of detail on its reasoning on inventive step that we’ve seen in the cases so far.”

Our UPC team has first-hand experience of actions at the UPC and during our recent webinar, a panel of experts, including Greg Ward, Matthew Howell and Jamie Rowlands, talked through key insights on two of the fundamentals of European patent validity they’d gained from examining UPC decisions so far as well as their own experience of proceedings at the court. Our speakers covered the need for efficiency in the UPC, added subject matter, inventive step as well as sharing their top tips for preparing for a UPC litigation.

The webinar recording is available on request here.

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This is for general information only and does not constitute legal advice. Should you require advice on this, or any other Unified Patent Court related topic, then please contact upc@hlk-ip.com or your usual HLK advisor.