Article 56

An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art. If the state of the art also includes documents within the meaning of Article 54, paragraph 3, these documents shall not be considered in deciding whether there has been an inventive step.

UPC case law

UPC Court of Appeal

IPPT20240226, UPC CoA, Nanostring v 10x Genomics II
More likely than not that the subject-matter of claim 1 in the version of the main request will prove to be obvious (article 56 EPC). Likely that for a person skilled in the art at the priority date of the patent at issue, after successful application of an in vitro multiplex method for the detection of ASMs, the next step was to consider transferring the method to an in situ environment. Reasonable expectation of success from a technical point of view. Problems such as “molecular crowding” or “autofluorescence” are problems that regularly arise in connection with the in situ detection of analytes in issue or cell samples – but which a person skilled in the art would have been able to deal with on the basis of their expertise at the priority date and which therefore would not have prevented them from carrying out tests in the aforementioned sense due to insufficient prospects of success. Obvious for a person in the art who, proceeding from D6, was prompted to transfer the in vitro multiplex detection method disclosed therein to cell or issue samples, to also use the techniques of immunohistochemistry and/or fluorescence in situ hybridisation known to him or her on the basis of his or her expertise.

UPC Court of First Instance

IPPT20250131, UPC CFI, LD Mannheim, Rematec v Europe Forestry
Person skilled in the art (Article 56 EPC) is a mechanical engineer (Dipl.-Ing. (FH) or B. of Eng.) who has several years of professional experience in the development and construction of mills for grinding material. Product claim 1 lacks an inventive step (Article 56 EPC). If the panel's interpretation of feature 1d) is not followed, but instead a more extensive radial supply and removal of all the ground material through the corresponding openings is required, then D3 would not be novelty-destroying. However, in this case there would be no inventive step, since feature 1d) then results in an obvious way for the person skilled in the art from D3. The skilled person is first taught by the D3 that ‘the inlet and outlet openings can be provided practically anywhere in the direction of rotation of the rotor, one after the other, around the circumference of the rotor in the housing’ (page 11, 3rd paragraph, lines 19 to 21). For the person skilled in the art, the question as to how the inlet and outlet ports connected to the openings should be aligned in a meaningful way thus arises at the next stage, so to speak, when putting it into practice. In this respect, however, D3 opens up several options for the person skilled in the art that are in any case within his or her general technical grasp. Process claim 15 lacks an inventive step. The alignment of the discharge opening in the sense addressed by feature 15f and explained above lies here to the same extent in his general technical knowledge and, in addition, the ground material is discharged in one direction due to gravity, which can be addressed as being essentially radially oriented.

IPPT20250121, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Court not convinced that it would have been obvious to suggest the claimed vaporizer, regardless of ‘Cross’ being combined with an alleged common general knowledge or with ‘Lee’. To asses inventive step (Article 56 EPC) it is first necessary to determine one or more realistic starting points in the state of the art which would be of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop a product or process similar to that disclosed in the prior art. In particular, realistic starting points are the documents which disclose the main relevant features as those disclosed in the challenged patent or which address the same or a similar underlying problem. Against this background, ‘Cross’ is not a suitable starting point for the evaluation of inventive step. 

IPPT20250117, UPC CFI, CD Paris, NJOY Netherlands v Juul Labs
Person skilled in the art of vaping devices (Article 56 EPC) is a mechanical engineer with either a Bachelor’s degree or as Master’s degree in mechanical engineering and several years of experience in the technical field of electronic inhalable aerosol devices or electronic vaping devices, who may be assisted by an electrical engineer for those issues that relate to the electrical circuitry implemented in electronic inhalable aerosol devices or electronic vaping devices that he himself cannot handle 

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Skilled person (Article 56 EPC). Court considers that the person skilled in the art must be identified in a mechanical engineer with either a Bachelor’s degree or a Master's degree in mechanical engineering and several years of experience in the technical field of medical devices and specifically in the field of cochlear implants. Common General Knowledge. The ‘CGK’, in general, is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. A familiar source of information typically is a source to which a skilled person regularly turns for guidance on standard design solutions that are generally applicable, such as standard textbooks, encyclopaedias, manuals, handbooks, dictionaries and databases which the skilled person knows and can use as a suitable and reliable source for the respective information in the respective technical field. A familiar source of information should not be confused, however, with all publicly available prior art documents.  In any case, the ‘CGK’ is subject of evidence. Pursuant to Article 54 ‘UPCA’, the burden of proving the existence of the ‘CGK’ lies with the party invoking it. Without bearing the burden of proof, the opposing party may present evidence to establish the ‘CGK’, including evidence to the contrary.  Inventive step (article 56 EPC). Necessary to determine whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using its technical knowledge and carrying out simple operations. Inventive step is assessed in terms of the specific problem encountered by the person skilled in the art (see Paris LD, decision issued on 3 July 2024, UPC_CFI_230/2023). In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop an invention or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art documents. The problem-solution approach is one possible way for assessment of the inventive step. More detailed teaching of ‘Zimmerling’ is a more suitable starting point for the skilled person.Teaching in ‘Zimmerling’ leads the skilled person to another solution for the above-mentioned problem and, thus, away from the solution in claim 1 of Auxiliary Request 0a. Not obvious in light of ‘CKG’ in combination with ‘Zimmerling’

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
Person skilled in the art (article 56 EPC) may be identified – lacking any indication from the parties – in a generic technical expert who understands the technical meaning of these features.

IPPT20241211, UPC CFI, LD Paris, DexCom v Abbott
The skilled person (article 56 EPC):is a group of persons, comprising persons skilled in the field of (physiological) analyte monitoring systems (such as Continuous Glucose Monitoring (CGM)) and persons skilled in the art of designing portable electronic systems, who are also familiar with the communication and data processing techniques involved in such systems. Lack of inventive step claim 1 as granted (article 56 EPC): the invention set out in claim 1 as granted does not involve an inventive step when considered in view of Valdes combined with Goodnow. Two aspects of the solution -  the presence of a server between the host and the remote devices, and an invitation scheme – are rendered obvious by Goodnow. 

IPPT20241129, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Person skilled in the art  (Article 56 EPC) of electronic inhalable aerosol devices. The skilled person stands for the average expert who is typically active in the technical field of the invention, has had the usual prior training and has acquired average knowledge, skills and practical experience for routine work, but does not have inventive imagination, thinking and skills. When interpreting a patent claim, the person skilled in the art does not apply a philological understanding but determines the technical meaning of the terms used with the aid of the description and the drawings. Common general knowledge (‘CKG’) is not all publicly available knowledge (Article 56 EPC, Article 54 UPCA). Neither an individual product nor a patent application as such are a familiar source of information. In general common general knowledge is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. No lack of inventive step (Article 56 EPC). An assessment based on different starting points will be more complete and objective than problem-solution approach, which is only one possible way for assessment of the inventive step. There is no legal rule that requires its application or restricts the application of other approaches. This panel considers that an assessment based on different starting points as suggested by the Claimant will be more complete and objective. Starting from ‘Cross’ the skilled person has to redesign the whole structure of the device and search for solution how to secure the cartomizer above the battery segment which is not commonly and generally known. 

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO
Given the interpretation of the patent claim (Article 69 EPC): The patent is valid, revocation dismissed. The patent involves an inventive step (Article 56 EPC) Attack solely based on incorrect interpretation of the claim. 

IPPT20241105, UPC CFI, CD Paris, NJOY v Juul - II
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.

IPPT20241017, UPC CFI, CD Munich, Nanostring v Harvard
Auxiliary request 1 lacks inventive step (article 56 EPC). Starting from Göransson, it was in the view of the Central Division obvious for the skilled person at the priority date to transfer the method of Göransson to an in situ context, for instance in FISH, to detect e.g. RNA or proteins, thereby arriving at the claimed subject matter.

IPPT20240827, UPC CFI, LD Munich, Hand Held Products v Scandit

Validity. Burden of proof. It is the task of the defendant in the present case to present arguments based on the prior art that make the legal validity of the patent in dispute appear insufficiently secure (Article 54 UPCA). Due to the summary nature of the examination of the legal validity in proceedings for the adoption of interim measures, the number of arguments raised against the legal validity must generally be reduced to the best three from the defendant's point of view. Inventive step. Respondent's submission is not suitable to raise significant doubts as to the existence of an inventive step (Article 56 EPC).

IPPT20240826, UPC CFI, LD Hamburg, Avago v Tesla
Inventive step (article 56 EPC). An invention is deemed to exist if it does not result from the usual approach of the person skilled in the art, but requires an additional creative effort on their part. Contrary to the view of the defendant, the expert would have had no reason to look for allocation solutions in the style of D 4 after reading D 1. A problem-solution approach would not lead to a different result. 

IPPT20240731, UPC DFI, LD Munich, DexCom v Abbott
Lack of inventive step (Article 56 EPC). On the basis of Berman, the skilled person is faced with the task of selecting a communication protocol for on-demand data transfer from the list disclosed in Berman, after having selected, for example, BLE as the communication protocol for broadcasts. In doing so, the skilled person will consider all the advantages and disadvantages attributed to the respective protocols, which are common general knowledge. In order to optimize the energy consumption and other resources of a CGM system, the skilled person receives from Berman the suggestion to use a nearfield communication protocol to generate and transmit a request in order to initiate an on-demand data transfer (see paragraph [0103] last sentence), which he knows to be significantly less energy-intensive than any of the other protocols (Bluetooth or Wi-Fi) listed for periodic data transfer. Nor does Berman teach against combining different communication protocols. On the contrary, Berman teaches that a combination is possible. This choice would not require drastic changes to the system known from Berman, in which the display device can typically be a smartphone

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation
Auxiliary request II. No lack of inventive step (Article 56 EPC). The teachings contained in these prior art documents do not provide any motivation to solve the technical problem by adjusting the sampling rate based on at least one of the environmental altering events and the user induced event and, therefore, to change the energy-intensive process step of transmitting data to the controller on the basis of changing needs. Additionally, it should be noted that, according to Article 56 ‘EPC’, the state of the art relevant for the assessment of the inventive step does not include the content of European patent applications as filed if their dates of filing are prior to the date of filing of a European patent but their dates of publication are on or after that date. 

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences

Inventive step. Technical effect Auxiliairy request II (Article 56 EPC):  Person skilled in the art […] may be identified as a group consisting of a medical device engineer with an interest in prosthetic heart valves and an interventional cardiologist. Burden of proof: The party asserting the invalidity of the patent must prove the relevant constituent facts in order to rebut the presumption of validity accorded to the granted patent. It is necessary to determine whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is assessed in terms of the specific problem encountered by the person skilled in the art. Problem-solution-approach does not appear to mandatory. Regardless, applying the “problem-solution approach” to the present proceedings would not lead to a different conclusion.

IPPT20240716, UPC CFI, CD Munich, Sanofi-Aventis v Amgen
Patent revoked because of lack of inventive step (Article 56 EPC). Starting from Lagace the skilled person having the aim to provide a treatment or way of prevention of […] would as a next step have pursued the route of developing antibodies that block the interaction between PCSK9 and LDLR as explicitly suggested by Lagace [….] [and] would have ended up with antibodies as defined in the claims without inventive skill.  Skilled person is a team set out to solve a problem. The skilled person who, as rightly pointed out by the Defendant, is not an academic wishing to explore and understand the PCSK9 mechanism, but is a team that is set out to solve a problem, will consider a prior art document in its entirety in light of their common general knowledge and make realistic and practical deductions from a prior art teaching. The skilled person is aiming to solve a problem and in doing so is considering which next step(s), if any, are realistically to be taken. Absent any apparent errors or omissions in a prior art document, a skilled person will not be overly cautious (nor creative) and does not analyse every experiment in a prior art document in isolation with a view to the questions it does not answer but will rather be inclined to accept published (and peer reviewed) research results and reasonable conclusions drawn from those results at face value. Claimed subject matter is obvious and does not involve an inventive step (Article 56 EPC). An objective approach must be taken to the assessment of inventive step. Any starting point that has the same underlying problem as the claimed invention is a realistic starting point. In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated (i.e. have an incentive or in German: “Veranlassung”, see the CoA in NanoString/10x Genomics, p. 34) to consider the claimed solution and to implement it as a next step (“nächster Schritt”, CoA in NanoString/10x Genomics, p. 35, second par.) in developing the prior art. On the other hand, it may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s). Depending on the facts and circumstances of the case, it may be allowed to combine prior art disclosures. A technical effect or advantage achieved by the claimed subject matter compared to the prior art may be an indication for inventive step. A feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step.  Left undecided whether a reasonable expectation of success is required. The absence of a reasonable expectation of success (or more in general: nonobviousness) does not follow from the mere fact that other ways of solving the underlying problem are also suggested in the prior art and/or (would) have been pursued by others. Requiring considerable time and resources does not constitute an “undue burden” in patent law terms. The skilled person would have realised that making antibodies and setting up the screening methods may require considerable time and resources, but to do so does not constitute an “undue burden” in patent law terms. That the inventors took a non-routine approach to obtain the functional antibodies does not mean that the skilled person would not arrive at such an antibody using routine methods. 

IPPT20240704, UPC CFI, LD Paris, DexCom v Abbott 
Lack of inventive step (Article 56 EPC). In order to assess inventiveness, it is necessary to determine whether, given the state of the art, a person skilled in the art would have obtained the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is defined in terms of the specific problem encountered by the person skilled in the art. Patent in suit does not involve an inventive step when considered in view of D1 combined with common general knowledge. Obvious for the skilled person to continue using the same protocol when confronted with the task of carrying out D1, which lists four candidates (NFC, Bluetooth, BLE and Wifi). Not any particular or surprising effect ascribed to choosing NFC (or RFID), beyond the well-known advantages of low power consumption and security due to the low range.

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette
Burden of proof invalidity (article 54 UPCA). The burden of presentation and proof for facts relating to an attack on the novelty and/or inventive step of the patent in dispute lies with the defendant. Inventive step (Article 56 EPC). An inventive solution begins beyond the area which, based on the state of the art, is defined by what the skilled person with average knowledge, skill and experience can routinely develop and find in the relevant technical field. An invention is deemed to exist if it does not result from the usual approach of the person skilled in the art, but requires an additional creative effort on their part.