UPC CFI , LD Munich , 12 December 2026 : Revocation of a secondary use medical claim patent successful.
25-03-2026 Print this page
Counterclaim for revocation of a secondary use medical claim patent successful, patent revoked in entirety. Infringement action dismissed. (Article 56 EPC, Article 65 UPCA , Article 25 UPCA) .
Validity - Inventive step (Article 56 EPC).
The invention of the patent is obvious over the clinical trial document cited as prior art (Phase III TROPIC trial (NHSC).
Test to determine inventive step of a second medical use claim same as in (Amgen v. Sanofi-Aventis)
Reasonable expectation of success .
The question of reasonable expectation of success of the approach disclosed in the clinical trial documents , in terms of assessing an inventive step, is not the same as the question of whether the TROPIC trial will meet its primary endpoint.
Pointer for success.
The fact that a study is nearing completion per se, is neither a positive nor a negative pointer when assessing expectation of success.
The fact that the Tropic trial has been approved and had been in progress for three years without having stopped supports the expectation of success.
Six months before the ending of the trial the skilled person had a reasonable expectation for success. The crucial point in the present case is not the authorisation of the trial, it is the course of the trial without incident and the near ending of the trial, which leads to an expectation of success.
The skilled person does not need to be certain of success by any means for rendering a solution obvious, it is sufficient if the skilled person would have followed the teaching available in the prior art with a reasonable expectation of success.
National decisions and EPO decisions are to be considered by UPC panels , but are not binding. The panel follows the Tribunal Judiciaire de Paris’ reasoning and cannot agree with the conclusions of the Opposition Division and the BoA regarding inventive step.
