In light of the first revocation action being lodged at the UPC, the question of what the UPC’s inventive step framework will look like is being answered and new questions, regarding harmonization between UPC and EPO practices, are being asked.
The UPC appears to be carving out it’s own framework that diverges in some ways from the problem-solution approach favoured by the EPO. The UPC’s approach seems in some ways more flexible, considering the patent as a whole and determining a “realistic” starting point in the prior art.
The UPC’s approach can be summarised in the following three steps[1]:
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An underlying problem to be solved is identified, based on the claimed invention, and this underlying problem is used to determine a “realistic starting point” in the state of the art;
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The claimed subject matter is interpreted based on the description and drawings, determining technical meaning from the patent itself – “the patent description may represent a patent’s own lexicon” [2]; and
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It is determined whether the claimed solution is obvious by considering whether the skilled person would be motivated to consider the claimed solution and implement it as a next step in developing the prior art, starting from the realistic starting point and in view of the underlying problem.
There are clear similarities between the EPO and UPC approaches, such as comparing the prior art with a determined “starting point” to determine the obviousness of the claimed invention, as well as both utilizing a “could-would” approach to the motivation of the skilled person. However, there are also clear divergences between the two approaches.
One key difference is in how the formulation of the underlying problem solved by the claimed invention is identified. The approach of the UPC is to identify the problem based on the teachings of the patent (for example, by looking to the background section for relevant discussion) rather than by first considering the difference between the claimed invention and identified prior art and formulating a technical problem to be solved based on these differences, as taught by the EPO[3].
Another important difference is the UPC’s idea of a “realistic” starting point, which seems to be in sharp contrast to the EPO’s “most promising” starting point[4]. The UPC approach posits that there may be “several realistic starting points” in the prior art that may be appropriate for the assessment of inventive step in contrast to the EPO approach of generally attempting to identify a single most promising starting point.
These differences seem to point to a more holistic approach to framing the assessment of inventive step, considering the patent in question both more broadly in itself by paying more attention to the context the patent describes for itself, as well as the wider prior art landscape around it. Of course, it is clear that these differences in approach do have the potential for divergent decisions to be taken based on the facts of a case, and the question arises of how likely that is, and indeed how important.
It might be considered that, although typically applied, the EPO’s problem-solution approach is not a mandatory one[5], and it is only necessary that the technical problem be based on the technical effects and features of the invention. This baseline is consistent with the seeming approach of the UPC. Additionally, it might be noted that although the EPO’s Guidelines encourage the use of a “most promising starting point”, it is also accepted that there are in some cases “several equally valid starting points for the assessment of inventive step” which, too, seems to be consistent with the approach of the UPC.
It is also important to consider that it is not uncommon for conflicting decisions to arise on the same case within the same framework when examined by different Boards. It is entirely understandable that the same framework applied to the same facts might yield different judgements, because interpretations vary from person to person even when the underlying approach remains the same.
Thus, it would seem difficult at this stage, without a comprehensive set of UPC case law to compare to, to make a judgement on how the differences in approach to inventive step are likely to affect outcomes for cases depending on whether they are judged by the EPO or the UPC. However, in these early stages it seems there is more that the EPO and UPC agree upon than not with regard to assessing inventive step, and harmonization between the two frameworks does seem to be the ultimate goal of both. Time will tell if any significant divergence is felt, but at present, it remains to simply wait and see.
- By Elly Meyers
[1] UPC 14/2023
[2] UPC 14/2023, headnote 1
[3] EPC Guidelines for Examination, G-VII, 5.2
[4] EPC Guidelines for Examination, G-VII, 5.1
[5] R8/19