Background
Courts of the various EPC countries have different approaches and use different guidelines when assessing whether a patent involves an inventive step under Article 56 EPC. The EPO and the Technical Boards of Appeal apply a “problem-solution-approach,” and this is one of several possible approaches in France, Italy, the Netherlands, and Sweden. On the other hand, other jurisdictions, such as Germany and the UK, use other more “holistic” approaches.
UPC local divisions have, to date, indicated slightly diverging practices—the Paris CD suggested a different approach to the EPO whereas the Munich LD encouraged the UPC to adopt the EPO’s problem-solution approach (see our previous article). While some courts have concluded that they would have reached the same outcome using either approach, this has nevertheless led to some legal uncertainty about the UPC’s preferred approach. This is now resolved with the Court of Appeal’s guidance.
UPC Court of Appeal (CA) guidance on inventive step
The current two chambers of the UPC CA provided their first substantive decisions on this issue on the same day (here and here). The decisions were clearly coordinated and have provided a definite instruction for all UPC courts to adopt the following unified framework for assessing inventive step:
1. Identify the objective problem or inventive concept from the perspective of the skilled person
This initial step establishes what the patented invention contributes to the state of the art. The court identifies the inventive concept (or the technical teaching) underlying the invention, 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 drawings.
This is done from the perspective of the skilled person with common general knowledge at the priority date and is based on the technical effects that the skilled person understands are achieved with the claimed invention. In order to avoid hindsight, the objective problem should not contain pointers towards the claimed solution.
2. Find “realistic starting points” in the prior art in the relevant field of technology
A starting point is realistic if its teaching would be of interest to the skilled person wishing to solve the objective problem at the relevant date. Examples are if the prior art discloses several features similar to those relevant to the claimed invention and/ or addresses the same underlying problem.
The relevant field of technology is relevant to the objective problem to be solved and any field in which the same or a similar problem arises of which the skilled person is expected to be aware. There can be more than one starting point, and the invention must be inventive from each of them.
3. Determine whether the skilled person, wishing to solve the objective problem, would, from a realistic starting point, have arrived at the claimed solution and have expected to do so
a) Because the skilled person has no inventive skills and no imagination, they need a pointer or motivation from a realistic starting point that directs them to implement a next step in the direction of the claimed invention. A claimed solution is considered obvious when the skilled person would take the next step, either (i) prompted by the pointer or (ii) as a matter of routine, and arrive at the claimed invention.
b) The party asserting obviousness needs to prove that the skilled person took the next step expecting to find an envisaged solution to the objective problem. The means the results were clearly predictable or there was a reasonable expectation of success. The skilled person, at the priority date with common general knowledge, needs to be able to predict rationally, on the basis of a scientific appraisal of the known facts before the start of the research project, that the step would solve the objective problem within acceptable time limits.
c) Whether there is a reasonable expectation of success depends on the circumstances of the case:
i. In unexplored technical fields, it is more difficult to make predictions about successful conclusions, so there will be a lower expectation of success.
ii. Envisaged practical or technical difficulties as well as the costs involved may deter the skilled person from taking that step. If the patentee sufficiently substantiates such uncertainties and/or practical or technical difficulties, the party alleging obviousness then needs to prove that these would not prevent a skilled person from having a reasonable expectation of success.
iii. The stronger a pointer towards the claimed solution, the lower the threshold for a reasonable expectation of success.
iv. The fact that other persons or teams were working contemporaneously on the same project does not necessarily imply that there was a reasonable expectation of success. It may also indicate that it was an interesting area to explore with a mere hope to succeed.
Applying the guidelines
The key to the UPC’s approach is addressing: (i) why the skilled person would move in the specific direction of the invention; and (ii) if they followed the suggested path, whether they would have had a rational basis to expect it to work. The UPC repeatedly stresses “would, not could”: it is insufficient to show the mere feasibility of an option, the existence of techniques to implement a change, a general interest in a target or a broad research activity. The skilled person must be directed by the prior art and be able to predict success with some confidence appropriate to the field, e.g., through scientific predictability or physiological plausibility. More specifically, this means the following:
- Conditional language in the prior art, identification of areas for exploration and/or calls for further studies can’t count as directional signposts.
- Prior art design philosophy (e.g., teaching away from the invention) or unresolved physiology can defeat motivation and predictability. Post-priority context can also reinforce uncertainty, e.g., if later publications continue to describe contributions as uncertain.
- Whilst the requirements of (i) a pointer/motivation and (ii) predictability/reasonable expectation are interdependent, one does not substitute for the other. A stronger pointer can provide a higher expectation of success, but it cannot fix a predictability gap. For example, if key physiological uncertainties persist at the priority date, there can be no reasonable expectation of success.
- For claims in “medical use” format, the expectation needs to be of an effective treatment that has a meaningful therapeutic effect, not just some degree of biological effect.
- It is not necessary to show improvement of the technical teaching as defined in the patent claims over the prior art. A non-obvious alternative to solutions known in the art may be sufficient.
- A patentee may rely upon a technical effect, if the skilled person with common general knowledge, based on the application, would consider that technical effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.
Comment
The UPC has not adopted the EPO’s problem-solution-approach, which is sometimes criticized as being too formulaic. Instead, it has confirmed its own approach to inventive step which differs from the EP approach in several respects:
- An often-quoted criticism of the EPO in the past was the requirement to identify the “closest piece of prior art” or the “most promising starting point” for a development leading to the invention. This may have been procedurally efficient, but it can be limiting and risks introducing subjective elements and qualitative judgments that can influence the analysis. More recently, the EPO started to allow several valid starting points (e.g., several workable solutions from different prior art documents) if they are equally valid springboards, but in general the starting point is still to seek to identify the closest prior art. The UPC, on the other hand, avoided possible issues from the start by introducing more flexibility and allowing more than one starting point, provided each is a “realistic” starting point. In practice, however, this difference between the EPO’s and UPC’s approach is unlikely to be significant. The UPC judges, in their efficient procedural management, are also likely to concentrate on the most realistic starting points—the strongest pieces of prior art.
- The stages of the assessment are in a different order. The EPO first identifies the prior art and then assesses differences with the claimed invention to identify (objectively) the technical problem. This is to avoid both the patentee identifying the problem (which may overlook closer prior art) and the skilled person being directed to the solution with hindsight. To the contrary, the UPC first identifies the inventive concept from the patent itself before determining the relevant prior art for the obviousness assessment. However, the UPC recognizes the objective problem is not always as formulated in the patent.
- In the assessment of the objective technical problem, the EPO practice of comparing the invention to the closest piece of prior art often leads to a focus on individual features of the claim in isolation. The UPC approach aims to look at the patent as a whole and identify the overall essence of the invention and what it adds to the state of the art.
Nevertheless, the UPC has clearly been influenced by the EPO test and its caselaw, and the result is a UPC framework that has many similarities:
- Both practices aim to avoid any issues caused by hindsight. Requiring motivation and predictability link the assessment of inventive step to the scientific realities of the field at the priority date. Furthermore, the need for a genuine pointer in the prior art prevents a hindsight-induced reconstruction prompted by knowledge of the invention. The PSA aims to identify the motivation for the skilled person to look at the prior art whereas the UPC is more implicit, saying he would do this as a matter of routine.
- The “would-not-could” test is central to both the EPO and UPC approaches, emphasizing that obvious inventions are those that the unimaginative skilled person would arrive at when faced with the objective technical problem and the prior art. Overall, despite the slight nuances in how they are framed, both approaches aim to identify non-obvious inventions under Art 56 EPC by essentially identifying a problem and the solution identified in the patent, whilst avoiding hindsight. For that reason, it seems that the approaches, if applied correctly, will lead to the same outcome in most cases. This has been noted by some UPC courts. In fact, the new UPC CA framework resulted in a reversal of one of the first instance decisions and a ruling that the relevant patent was inventive—a result that ultimately aligned with a parallel EPO determination. The clarification from the UPC on its preferred approach to inventive step is therefore not likely to lead to many divergences in outcome. However, it is still incredibly useful to litigants as it helps them to frame and draft their submissions in the correct way.
On balance, this latest guidance from the UPC on the assessment of inventive step appears pro-patentee; it places the burden for establishing obviousness with the party seeking to revoke the patent and requires them to establish that any next steps required from the prior art would be predictable or carried out with a reasonable expectation of success.
Parties seeking to prove the obviousness should be particularly aware of the need to overcome the hurdle of showing motivation of the skilled person to pursue next steps to bridge gaps between the prior art and the claimed invention. While it will still be possible to close such gaps by relying on pointers within the prior art or general expertise, it may be necessary to think creatively as to how general principles can be applied and argued to be so well known that their application is credible as routine and their prospects of success are apparent at first glance.
In contrast, patentees can defend the inventiveness of patents by demonstrating that the research required to undertake the next step from the prior art was unattractive or uncertain at the priority date. If the patentee can substantiate that the next step would be costly, involve practical or technical difficulties or a reasonable failure rate, invalidity applicants may then have difficulties proving that the skilled person would still expect success.
