The UPC Court of Appeal has now set out details on how inventive step is to be assessed. The decision provides guidance and shows some notable differences from the well-known EPO approach.
A key point is how the objective problem is identified. The Court looks at the invention in the context of the whole disclosure and the technical effects it actually delivers. This is a more holistic assessment than the EPO’s Problem Solution Approach (PSA). The Court also makes clear that the problem’s formulation must not offer any pointers to the solution.
Another distinction is the treatment of prior art. The decision does not depend on identifying a single closest prior art. The Court allows more than one realistic starting point and the invention must involve an inventive step over all of them.
The Court also confirms that the skilled person must have a motivation or pointer to take the next step from the starting point towards the claimed invention. Importantly, the standard remains whether the skilled person would, and not merely could, have arrived at the solution.
The judgment further adds the concept of reasonable expectation of success to the obviousness analysis. Factors such as predictability, technical uncertainty, practical difficulties and even cost may play a role when assessing whether the skilled person would proceed along the path to the invention. The Court also explains that stronger pointers reduce the burden for a reasonable expectation of success.
These elements taken together indicate an approach that remains consistent in spirit with European inventive-step reasoning, but applies it in a more principle-based way: a broader range of possible starting points, stronger emphasis on technical contribution and effects, and a structured framework for motivation and expectation of success.
The UPC approach and the EPO PSA are related and share several foundations. At the same time, the Court’s clarification suggests a shift towards a more holistic and flexible assessment of inventive step that practitioners and patent owners will want to follow closely as the case law develops.
Final Decisions:
