UPC CoA, 25 November 2025, Meril v Edwards: General principles regarding inventive step (and more)
26-12-2025 Print this page
“Same parties” must be identical parties (Article 33(4) UPCA, Article 29 BR).
May be such a degree of identity between the interests of two legal entities that a judgment delivered against one of them would have the force of res judicata as against the other. In such a situation, the entities must be considered to be one and the same party. This interpretation of the concept of the “same parties” is similar to the interpretation of the concept of the “same parties” of Art. 29 Brussels Reg I bis, which has a comparable purpose.
Limited review in appeal of subsequent (third) application to amend the patent given margin of discretion of the judge-rapporteur (R. 50.2 RoP, R. 263 RoP).
Edwards could not reasonably have introduced the amendments at an earlier stage. Edwards explained that the purpose of the amendments is to present a single set of requests in the direct revocation action and the counterclaims for revocation. This is a legitimate purpose which also serves the interest of procedural economy. Edwards could not have done so at the time of filing its Defence to revocation, since Meril India and Meril Germany had not yet lodged their counterclaims for revocation at that point in time.
Claim construction (Article 69 EPC).
As a general rule, a product or process presented as an embodiment by the patent specification may be considered covered by the patent claims. However, there is room for an exception where the patent as a whole clearly teaches the person skilled in the art that the disclosed embodiment is not claimed, e.g. when it only illustrates a technical specification that is not addressed by the teaching of the patent claim.
Novelty and added matter are distinct legal concepts and are not governed by identical requirements (Article 54 EPC, Article 138(1)(c) EPC. As a general rule, a specific disclosure, such as a disclosure of the combination of features A and B, takes away the novelty of a more general patent claim claiming feature A as such. In contrast, a patent claim claiming feature A as such may extend beyond a more specific disclosure of the combination of A and B in the application.
General principles regarding inventive step (Article 56 EPC). Different approaches for assessing inventive step, like the problem-solution-approach or a more holistic approach, are merely guidelines to assist in the establishment of inventive step […] that, when properly applied, should and generally do lead to the same conclusion.
The burden and presentation of proof lies with the claimant in a revocation action (Art. 54 and 65(1) UPCA, R. 44(e)-(g), 25.1(b)-(d) RoP).
Even though proof of certain facts, if contested, may be required, the assessment of the relevant facts and circumstances is a question of law.
The approach taken by the Unified Patent Court when establishing inventive step is as follows.
It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with their common general knowledge, as at the application or priority date (also referred to as the effective date) of the patent.
This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the specification and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the person skilled in the art, on the basis of the application, understands is (are) achieved with the claimed invention. In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution.
The claimed solution is obvious when at the effective date the person skilled in the art, starting from a realistic starting point in the state of the art in the relevant field of technology and wishing to solve the objective problem, would (and not only “could”) have arrived at the claimed solution.
The relevant field of technology is the specific field relevant to the objective problem to be solved as well as any field in which the same or similar problem arises and of which the person skilled in the art of the specific field must be expected to be aware.
A starting point is realistic if the teaching thereof would have been of interest to a person skilled in the art who, at the effective date, wishes to solve the objective problem.
This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention.
There can be more than one realistic starting point, and the claimed invention must be inventive starting from each of them.
The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation (in German: “Anlass”) that, starting from a realistic starting point, directs them to implement a next step in the direction of the claimed invention.
As a general rule, a claimed solution must be considered not inventive/obvious when the person skilled in the art would take the next step, prompted by the pointer or as a matter of routine, and arrive at the claimed invention.
In case of infringement, not granting an injunction requires a special reason (Article 63 UPCA, Article 11 Enforcement Directive) such as if an injunction would be disproportionate taking into consideration not only the interest of the parties to the litigation but also interest of third parties such as patients (Article 3 Enforcement Directive). The interests of the patients justify an exception to the right to injunctive relief and corrective measures if it is established that the infringing embodiment is the sole available treatment method or represents an improvement upon the available treatment methods, resulting in a notable enhancement of patient care.
Interim award of costs (Art. 69(1) UPCA, R. 150(2) RoP) As a general rule, the successful party is not entitled to an interim reimbursement of representation costs of more than 50% of the ceiling of recoverable costs. To what extent the successful party is entitled to a reimbursement of representation costs is to be determined in the proceedings for a cost decision. In general, the Court may assume that the successful party will be entitled to 50% of the applicable ceiling and may order reimbursement of that amount by means of an interim award, unless there are clear indications that the successful party in fact incurred fewer representation costs or that 50% of the applicable ceiling is more than what would be reasonable or proportionate in the particular circumstances of the case. At the same time, as a general rule, the Court cannot assume that the successful party is entitled to more than 50% of the applicable ceiling before the conclusion of the cost proceedings according to Chapter 5 of Part 1 RoP. An exception may apply if parties have submitted and discussed cost specifications during the proceedings or have agreed on the costs to be reimbursed.
