UPC CD Paris, 5 November 2024: Inventive step is to be objectively evaluated
15-12-2024 Print this page
Revocation EP 911 dismissed.
To provide legal certainty an objective approach to be applied to evaluation of inventive step (Article 56 EPC).
The person skilled in the art is an element of this objective approach. Subjective considerations, a subjective motivation to make specific modifications to the prior art or the subjective knowledge and skill of the named inventor(s) (or the parties to the case), for example, are not to have an influence on the evaluation of inventive step.
The state of the art is a further element of this objective approach. […].
Limiting the evaluation of inventive step to certain elements of the prior art, for example a document perceived to be “the closest prior art”, generally bears the risk of introducing subjective elements into the evaluation, for example if the reasons for disregarding certain elements of the prior art are of subjective nature. This said, for reasons of procedural efficiency it may be justified in a particular case to focus the debate on a certain element or on certain elements of the prior art and it may be justified in a particular case to reduce the evaluation of other elements of the prior art to a minimum.
What is to be evaluated is an activity. An activity can be motivated by an underlying problem.
Inventive to affix a heater, which comprises a heater chamber, to a first end of the cartridge and to affix a mouthpiece to a second end of the cartridge:
(i) there is no suggestion in the state of the art;
(ii) From the facts submitted it cannot be established that it belonged to the common general knowledge at the time of the earliest priority of the Patent.
