There has been much speculation about how the UPC will approach the assessment of inventive step. European patent attorneys are accustomed to using the EPO’s “problem and solution approach”, while the national patent offices of the UPC participating states have a variety of different tests for inventive step.
So far, some Divisions seem to have adopted elements similar to those of the problem and solution approach in applying a different methodology for assessing inventive step. However, some of the decisions seem intentionally to stray from the problem and solution approach. One of the decisions specifically refers to the problem and solution approach, but only to argue that its application does not seem to be mandatory, in what may be an indication that the UPC is aiming to develop its own test for inventive step.
Franz Kaldewei vs Bette
In Franz Kaldewei vs Bette, the Dusseldorf Local Division held that claim 1 of the patent as granted was not inventive in view of a single prior art document, because the considerations that the skilled person makes in order to achieve the single feature that was not present in the prior art did not go beyond the scope of routine further development.
Explaining its reasons for this conclusion, the Division stated that a patent is only awarded to the expert who is inventive, and that an inventive solution begins beyond the area which, starting from the state of the art, is defined by what a well-trained expert with average knowledge, skills and experience can routinely develop and find in the relevant technical field.
The Division further stated that an invention exists when it does not result from the expert’s usual approach in his field of expertise, but requires additional creative effort in his part.
The Division was convinced that, based on the prior art, it was a routine consideration for the expert faced with the task of specifying a sanitary tub device that could easily be made in different sizes and has good functional properties to make profile pieces and a tub support out of rigid plastic foam, as required by claim 1 of the patent as granted.
Thus in this case, while the UPC did not follow the EPO’s problem and solution approach, the methodology adopted by the Court shared some similarities with the EPO’s approach, in the identification of a “task” based on the prior art.
Dexcom vs Abbot
In Dexcom vs Abbot, the Paris Local Division’s approach to assessing inventive step of claim 1 of the patent as granted was first to identify the difference between the invention defined in the claim and the most relevant prior art. The difference was that the prior art does not expressly disclose the protocol (NFC) used for transmitting the second portion of the analyte measurement data.
The Division then defined a technical problem of “choosing a protocol for transmitting the second portion of the analyte measurement data”.
The Division finally held that in view of the express disclosure of D1, it would be obvious for the skilled person to use the NFC protocol to transmit the data to achieve the effects commonly ascribed to this protocol.
The Division adopted the same approach to assessing inventive step of claim 1 of the first auxiliary request, which was also held to lack inventive step.
Although the problem and solution approach was not mentioned here, the approach taken by the Paris Local Division in this case is very similar to that of the EPO, in that it identified the difference between the claimed invention and the prior art and derived a technical problem based on that difference.
Sanofi vs Amgen
In Sanofi vs Amgen, the Munich Central Division referred to the relevant provision (Article 56) of the European Patent Convention, and stressed the need for an objective approach to the assessment of inventive step that avoids hindsight.
The Division explained that in order to assess whether or not a claimed invention was obvious to a skilled person, it is first necessary to determine a starting point in the state of the art, and there has to be a justification as to why the skilled person would consider a particular part of the state of the art as a realistic starting point. This differs from the EPO’s approach, which requires the closest prior art to be identified.
The Division further explained that a starting point is realistic if its teaching would have been of interest to a skilled person who, at the priority date of the patent at issue, was seeking to develop a similar product or method to that disclosed in the prior art which thus has a similar underlying problem.
This is similar to the way the EPO’s problem and solution approach, in which the first consideration in selecting the closest prior art is that it must be directed to a similar purpose or effect as the invention.
However, in contrast to the EPO’s approach (which requires the identification of the prior art that represents the most promising starting point for a development leading to the invention), the Division in this case expressly stated that there can be several promising starting points, and that it is not necessary to identify the most promising starting point.
After a comparison of the claimed subject matter to the prior art, the next question is whether it would be obvious for the skilled person, starting from a realistic prior art disclosure, in view of the underlying problem, to arrive at the claimed solution.
In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated to consider the claimed solution and to implement it as a next step in developing the prior art.
On the other hand, if the claimed subject matter achieves a technical effect or advantage compared to the prior art, this may be indicative of the presence of an inventive step.
Applying these considerations, the Division found that, starting from a piece of prior art proposed by the claimant, the next obvious step for the skilled person following up on an explicit suggestion in the prior art would be the development of antibodies that fall within the claims of the patent, and hence that the patent lacked an inventive step.
Meril vs Edwards
In Meril vs Edwards, the Paris Central Division stated that in assessing inventive step, it is necessary to determine whether, given the state of the art, a person skilled in the art could have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations.
The Division further stated that inventive step is assessed in terms of the specific problem encountered by the person skilled in the art, citing the Paris Local Division’s decision in Dexcom vs Abbott.
Applying these principles, the Division rejected the arguments of lack of inventive step, holding that the patent, as amended by auxiliary request 2, was indeed inventive.
Importantly, in this case the Division explicitly addressed the use of the problem and solution approach, stating that “this test is not explicitly provided for in the EPO and, therefore, does not appear to be mandatory.” Nevertheless, the Division explained that applying the problem and solution approach to these proceedings would not have led to a different conclusion on inventive step
While not an outright rejection of the problem and solution approach, this is perhaps the clearest indication yet that the UPC intends to develop its own approach to the assessment of inventive step.
Bitzer vs Carrier
In Bitzer vs Carrier the Paris Central Division again referred to the Paris Local Division’s decision in Dexcom vs Abbott in its assessment of inventive step of claim 1 of the patent as amended by auxiliary request 2.
The Division held that none of the prior art documents relied on by the claimant provided any motivation to solve the technical problem, and that the solution claimed (adjusting a sampling rate based on an environmental altering event or user induced event) would not be an evident solution. Accordingly, the Division held that the patent as amended by auxiliary request 2 was inventive.