Article 56
Print this pageAn 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
IPPT20260417, UPC CoA, Abbott v Sinocare
Obviousness attack in proceedings for provisional measures requires substantiated argumentation (R. 24 RoP, R. 211 RoP, Article 56 EPC). A defendant who raises an obviousness attack in proceedings for provisional measures must substantiate why it considers it more likely than not that the patent will be held invalid based on the submitted prior art. This requires substantiated argumentation and not merely submitting a multitude of documents and quoting a few isolated sentences from each of these documents without explaining why a skilled person would make this combination and how the invention would be obtained in an obvious manner from this combination. Assessment of inventive step and non-technical features (Article 56 EPC). A claim feature should not be excluded from the assessment of inventive step merely because it is a non-technical feature, i.e. a feature which, on its own, would be considered a “non-invention” under Art. 52(2) EPC. A feature that is non-technical as such may still contribute to the technical character of the claimed invention as a whole by its interaction with the other claim features. Therefore, the interrelationship and functioning of the claim features must be assessed together […].
IPPT20260330, UPC CoA, Sinocare v Abbott
Definition of skilled person is a question of law (Article 56 EPC). The definition of a skilled person is a question of law, not a statement of fact. Inventive step – no incentive and no pointer (Article 56 EPC). The skilled person had no incentive to adapt the sensor system of US833 and had no pointer to adjust this system to obtain the patented sensor system with the advantages described in the patent at issue.
IPPT20260217, UPC CoA, Rematec v Europe Forestry
Inventive step (Article 56 EPC) There is no suggestion to modify in such a way that, instead of providing an essentially tangential feed-in and discharge, they would enable an essentially radial feed-in and discharge.
IPPT20251229, UPC COA, VMR Products v NJOY
Appeal rejected: patent revocation upheld. Inventive step (Article 56 EPC) Is to be established in accordance with the Sanofi V Amgen decision .The objective problem must be assessed by establishing what the invention adds to the state of the art, not just by looking at the individual features of the claim, but by comparing the claim as a whole and considering the inventive concept underlying the invention. The objective problem should not contain pointers to the claimed solution . The objective technical problem is limited to “providing a vaporizer that facilitates checking the status of the inserted cartomizer”. And not ‘facilitating to check the status of the battery electrical contacts’ as suggested by VMR Products. The invention in prior art “Pan” is a realistic starting point for an inventive step analysis, as it belongs to the same field of technology and discloses several features similar to those relevant to the invention.
IPPT20251125, UPC CoA, Amgen v Sanofi & Regeneron
Inventive step Article 56 EPC). Same as UPC CoA Meril v Edwards of the same date with added criteria on “reasonable expectation of success” A claimed solution is obvious if the skilled person would have taken the next step in expectation of finding an envisaged solution of his technical problem. This is generally the case when the results of the next step were clearly predictable, or where there was a reasonable expectation of success. The burden of proof that the results were clearly predictable or the skilled person would have reasonably expected success, i.e. that the solution he envisages by taking the next step would solve the objective problem, lies on the party asserting invalidity of the patent. A reasonable expectation of success implies the ability of the skilled person to predict rationally, on the basis of scientific appraisal of the known facts before a research project was started, the successful conclusion of that project within acceptable time limits. Whether there is a reasonable expectation of success depends on the circumstances of the case. The more unexplored a technical field of research, the more difficult it was to make predictions about its successful conclusion and the lower the expectation of success. Envisaged practical or technical difficulties as well as the costs involved in testing whether the desired result will be obtained when taking a next step may also withhold the skilled person from taking that step. On the other hand, the stronger a pointer towards the claimed solution, the lower the threshold for a reasonable expectation of success. The fact that other persons or teams were working contemporaneously on the same project does not necessarily imply that there was a reasonable expectation of success.
IPPT20251125, UPC CoA, Meril v Edwards
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.
IPPT20250304, UPC CoA, Sumi Agro v Syngenta
Provisional injunction confirmed. Person skilled in the art (Article 56 EPC). Common general knowledge is knowledge that an experienced person in the field in question is expected to have, or at least to be aware of, to the extent that he knows he could look it up in a book if he needed it. More likely than not that the patent is valid. The mere chance that the skilled person could choose such an ingredient is insufficient for a finding of lack of inventive step. (Article 56 EPC).
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
IPPT20260422, UPC CFI CD Paris, Huntsman v BASF
Patent maintained in amended form. Inventive Step (Article 56 EPC, R. 30 RoP). The Court is not bound by the patent’s stated problem and may reformulate the problem based on the whole disclosure. The Court found that the real technical problem is improving adhesion between PIR foam and deck layers, not flame retardancy. The technical difference (density ranges) is a routine selection because they overlapped with known values in the prior art and reflected standard parameters that a skilled person would adjust based on practical requirements. Since no specific or unexpected technical effect was linked to these ranges, their selection did not involve an inventive step. Application to amend the patent (R. 30 RoP). When examining the auxiliary claims, the court is bound by the arguments put forward by the plaintiff regarding their patentability and takes only those into account. The grounds cited in the main claim with respect to the granted version are therefore taken into account when examining the auxiliary claims only if the plaintiff invokes them.
IPPT20260224, UPC CFI, CD Munich, UPM-Kymmene v International N&H
Patent revoked: lack of inventive step, added matter. (Article 56 EPC, Article 138(1)(c) EPC). Absent an inextricable link between a claimed composition and an inventive process for the production of a known end-product, no inventive step can be acknowledged for an otherwise non-inventive composition relied upon as an intermediate product.
IPPT20260224, UPC CFI, CD Munich, TCL Europe v Corning
Inventive step (Article 56 EPC). A realistic starting point, in the opinion of the Court, is typically a prior art disclosure as a whole. Absent a specific reason or pointer in the disclosure itself (or based on common general knowledge) to do so, the selection of a particular example composition as a “starting point”, merely because it happens to come “closest” to the claimed subject matter in terms of structural components bears the risk that such selection itself already involves hindsight. Where the features of a patent claim, in an interdependent way, even if they are not synergetic in the sense of having a special combination effect, provide a solution to the objective problem, ignoring these interdependencies and dividing the objective problem up into separate problems amounts to hindsight reasoning which is to be avoided in the assessment of inventive step.
IPPT20260421, UPC CFI, LD Milan, Dainese v Alpinestars
Inventive step and evidence ((R. 171(2) RoP, Article 56 EPC). Documents are facts, how these are interpreted interpretation for the purpose of assessing inventive step is a question of argument.
IPPT20260211, UPC CFI, LD Düsseldorf, Canon v Katun
Patent valid and infringed. (Article 25 UPCA).VALIDITY. Inventive step present (Article 56 EPC).The stronger a pointer towards the claimed solution, the lower is the threshold for a reasonable expectation of success. Whether there is a reasonable expectation of success depends on the circumstances of the case. The more unexplored a technical field of research, the more difficult it was to make predictions about its successful conclusion and the lower the expectation of success. The Defendants did not show a pointer to the solution, which would have directed the skilled person from D3 (prior art) to a next step in the direction of the invention claimed in the patent in suit. No arguments presented as to how such a pointer could be derived from the prior art D3.
IPPT20260116, UPC CFI LD Paris, IMC Creations v Mul-T-Lock
Unitary patent valid (Article 65 UPCA) and infringed (Article 25 UPCA). Permanent injunction granted.(Article 63 UPCA) Inventive step - common general knowledge of the skilled person (Article 56 EPC) Documents not part of common general knowledge : Document not sufficiently widely disseminated to form part of the basic knowledge of a person skilled in the art. If they constitute specialized literature, and it has not been established that they are documents forming part of the basic technical background .
IPPT20260112, UPC CFI, CD Paris, WhiteWater v American Wave
Decision by default (Rule 355 RoP). Patent partially revoked (Article 65 UPCA). Claim 1 lacks inventive step (Article 56 EPC). Lack of inventive step – technical contribution (Article 56 EPC). When assessing inventive step, only the features that contribute to the technical effect shall be taken into consideration. D3 provides the skilled person with a clear incentive to equip the apparatus of D1 with a mobile application controller that performs the sequence of feature 2.2, featuring a software interface that enables users to create wave profiles, according to feature 3. Furthermore, it is highly questionable whether the mere addition of a wave creation module constitutes a technical contribution. Since the user selects the parameters according to their personal preferences this choice does not appear to produce a further technical effect on the apparatus’s operation beyond what is already achieved according to a pre-programmed wave profile.
IPPT20260107, UPC CFI, CD Paris, Microsoft v Suinno
Inventive Step (Article 56 EPC) For completeness claim 1 also lacks inventive step in view of the document ’BP07’ completed with the teaching of the document BP08’.
IPPT20251212, UPC CFI, LD Munich, Sanofi v Zentiva
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.
IPPT20251120, UPC CFI, CD Munich, Baussmann v Raimund Beck Nageltechnik
Patent partially revoked for lack of inventive step , to the extent it covers more than auxiliary request III, with claims 5 and 6 remaining unchanged. (Article 56 EPC, Rule 25 RoP, Rule 30 RoP). Lack of inventive step in Claims 3 and 6 of the patent. (Article 56 EPC). When assessing inventive step, it should always be borne in mind that it must be avoided that an invention is assessed retrospectively. This also applies when common general knowledge is relied on, and in such a case, it is usually necessary for the person skilled in the art to have an incentive to arrive at the claimed subject matter based on the state of the art.
IPPT20251128, UPC CFI, LD Munich, JingAo Solar v Chint
Inventive step – no incentive (Article 56 EPC). The skilled person would have to flip the entire construction of the solar cell of D7 around to transform it into a front junction solar cell, the skilled person has no reason to do so, since D7 precisely proposes an improved back junction solar cell.
IPPT20251127, UPC CFI, CD Milan, Pai Pharma v Philips
Inventive step (Article 56 EPC). Burden of proof of existence of common general knowledge is on the party invoking it (Article 54 UPCA). The inhalation valve an essential feature of the device of D3. There is no hint to remove the valves. Therefore, D3 teaches away from omitting the inhalation valve 20.
lPPT20251118, UPC CFI, LD The Hague, Advanced cell Diagnostics v Molecular Instruments
Inventive step (Article 56 EPC). Prior art teaches away from invention.
IPPT20251020, UPC CFI, CD Paris, Meril v Edwards Lifesciences
Inventive step (Article 56 EPC) For the assessment of the inventive step, a “holistic approach” – that is, a broader way of assessing non-obviousness by considering the invention as a whole, rather than just focusing upon isolated distinguishing features – appears, in general, to be more appropriate.
IPPT20251010, UPC CFI, LD The Hague, HL Display v Black Sheep Retail
Inventive step (Article 56 EPC). BSRP has not showed any hint in the prior art given to the skilled person towards the claimed solution and is not able to explain why the skilled person would make such modification.
IPPT20250911, UPC CFI, LD The Hague, Washtower v Wasombouw
Inventive step (Article 56 EPC) Irrespective of whether D1 should be or should not be considered as a realistic starting point, the court believes that D1, combined with any of the prior art documents submitted by Defendants, does not prejudice inventiveness of the claim.
IPPT20250813, UPC CFI, LD The Hague, Winnow v Orbisk
Lack of inventive step (Article 56 EPC) because error-cleaning steps suggested by common general knowledge, as mentioned above, are so basic that any Skilled Person would perform them, regardless of how unreliable they think the data is. In any case, the Court finds that it is clear from the video, and even more so from its application in a live commercial kitchen environment, that the captured weights will inevitably contain errors, such as when a bin is changed or when users rest their hands, plates or pans on the scale.
IPPT20250728, UPC CFI, CD Paris, Essetre Holding
Assessment of inventive step (Article 56 EPC). 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. 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.
IPPT20250721, UPC CFI, RD Nordic Baltic, Edwards v Meril
Inventive step (Article 56 EPC). Problem-solution-approach: The parties have used the PSA as the basis when they have discussed inventive step and the Court sees no reason to make its assessment based on a different test. Hence, the PSA will be applied.
IPPT20250721, UPC CFI, CD Paris, Sibio v Abbott
Inventive step (Article 56 EPC). An assessment based on two different starting points is appropriate. No incentive or pointer in prior art for dramatic design change.
IPPT20250710, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi
Inventive step – prior art with different field of application (Article 56 EPC). Person skilled in the art has no reason to consult D5 when searching for a solution to the problem addressed by the patent in suit because the subject matter of D5 has a different mode of operation and a different field of application compared to the claimed system for wireless charging.
IPPT20250606, UPC CFI, LD Munich, Tiroler Rohre v SSAB
Inventive step (Article 56 EPC): Problem-solution-approach: to increase legal certainty and further align the case law of the Unified Patent Court with the case law of the EPO and its Boards of Appeal, the problem-solution approach (PSA) developed by the European Patent Office (EPO) should be applied as far as possible.
IPPT20250529, UPC CFI, CD Paris, Lindal v Rocep-Lusol
Inventive step – non-obvious synergistic effect (Article 56 EPC). The combination of the use of only a compressed gas propellant with the clearance provided between the second piston and the container wall determines a synergistic effect of creating a sealant film on the container wall which reduces friction while maintaining a seal and mitigates the rapid pressure drop of the compressed gas during the expansion of the propellant chamber. This is not disclosed or rendered obvious by the claimant’s cited prior art documents.
IPPT20250513, UPC CFI, LD Düsseldorf, Sanofi v Amgen
Inventive step (Article 56 EPC). The ultimate assessment of the relevant facts and circumstances is a question of law which does not lend itself to the taking of evidence. An objective approach must be taken to the assessment of inventive step. The subjective ideas of the applicant or inventor are irrelevant. In principle, it is also irrelevant whether the invention is the result of serendipity or of systematic work involving (potentially costly and laborious) experimentation. It is only relevant what the claimed invention actually contributes to the prior art. 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” […]) to consider the claimed solution and to implement it as a next step (“nächster Schritt”, […]) in developing the prior art.
IPPT20250508, UPC CFI, LD Düsseldorf, Grundfos v Hefei
Inventive step (Article 56 EPC). In general, a claimed solution is obvious if the skilled person, starting from the prior art, would be motivated to consider the claimed solution and, as a next step in developing the state of the art. On the other hand, it may be relevant whether the skilled person would have expected particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to combine disclosures from the prior art. A technical effect or advantage achieved by the claimed subject matter over the prior art may be an indication of inventive step. A feature arbitrarily selected from several possibilities cannot generally contribute to inventive step.
IPPT20250430, UPC CFI, CD Paris, Kinexon v Ballinno
Lack of inventive step: the skilled person, looking to improve D3 to provide a more reliable ball contact detection, would have looked in the literature of games and sports how to increase the reliability of the detection, including D2, which belongs to this technical field and teaches a solution to this technical problem. D2 provides such a solution, which answers the objective technical problem, so that it is obvious for the skilled person to use this solution within the method and system of D3. Inventive step (Article 56 EPC). In general, a claimed solution is obvious if, starting from the prior art, the skilled person would be motivated […] to consider the claimed solution and to implement it as a next step […] 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.
IPPT20250410, UPC CFI, LD Düsseldorf, Yellow Sphere v Tabbert
Standard for inventive step (Article 56 EPC): the assessment of inventive step always requires an evaluation in each individual case, taking into account all relevant facts and circumstances. An objective approach must be adopted. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. The decisive factor is whether the claimed subject matter is such that the skilled person would have found it based on their knowledge and skills, e.g. through obvious modifications of what was already known. .There may be several realistic starting points, whereby it is not necessary to determine the ‘most promising’ starting point.
IPPT20250404, UPC CFI, LD Munich, Edwards v Meril
Inventive step (Article 56 EPC).Problem-solution-approach developed by the European patent Office (EPO) shall primarily be applied as a tool to the extent feasible to enhance legal certainty and further align the jurisprudence of the Unified Patent Court with the jurisprudence of the EPO and the Boards of Appeal (BoA).
IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - II
Lack of inventive step starting from EP’452 in combination with common knowledge (Article 56 EPC). The use of a particular means may be obvious even without a corresponding specific motivation if, by its nature, said means, as a general means to be considered for a plurality of applications, belongs to the general knowledge of the relevant skilled person, the use of the functionality in question is objectively appropriate in the context to be assessed and no special circumstances can be identified which make an application appear impossible, difficult or otherwise impractical from a technical point of view. Lack of inventive step starting from EP’452 in combination with EP’968, JP’090 or EP’541. Lack of inventive step starting from JP’021. Lack of inventive step starting from EP 408 in conjunction with general common knowledge or, alternatively, in combination with other documents.
IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
Inventiveness – no incentive to recombine (Article 56 EPC). With regard to inventiveness, there is no motivation for the skilled person to recombine the micropore properties of the thirty examples disclosed in table 2 so as to arrive at a technical solution which is encompassed by the patent-in-suit.
IPPT20250307, UPC CFI, LD Düsseldorf, Tridonic v Cupower
Inventive step (Article 56 UPCA). Case by case basis. An objective approach must be taken. The subjective ideas of the applicant or inventor are irrelevant. Only what the claimed invention actually contributes to the state of the art is relevant. Decisive whether the skilled person would have found the claimed subject matter through obvious modifications of what is already known. Realistic starting point: if its teaching would have been of interest to a skilled person who, at the priority date of the contested patent, was seeking to develop a product or process similar to that disclosed in the prior art, i.e. one that has a similar basic problem to the claimed invention. There may be several realistic starting points, and it is not necessary to determine the ‘most promising’ starting point. Obvious if skilled person would have an incentive and would consider the claimed solution as a next step in the development of the state of the art. It may be relevant whether the skilled person would have expected particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to subject disclosures from the prior art to a comprehensive assessment. A technical effect or advantage achieved by the claimed subject matter in comparison with the prior art may be an indication of inventive step. A feature that has been arbitrarily selected from several possibilities cannot generally contribute to inventive step. Retrospective consideration must be avoided.
IPPT20250219, UPC CFI, LD Hamburg, Lionra v Cisco
Inventive step (Article 56 EPC). An invention exists 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.
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.
IPPT20250122, UPC CFI, CD Paris, NJOY v VMR
Common general knowledge (Article 56 EPC). 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 (Article 54 UPCA)
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’
IPPT20241220, UPC CFI, LD Mannheim, Pohl-Boskamp v pharma-aktiva
No high probability that the patent is invalid. Not established with a high probability ((überwiegender Wahrscheinlichkeit) that the European patent does not disclose the invention in a manner sufficient for it to be carried out by a person skilled in the art (Article 138(1)(b) EPC). Same for lack of inventive step (Article 138(1)(a) EPC, Article 56(1) EPC).
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.
IPPT20241127, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Patent revoked in its entirety (Article 65 UPCA). Lack of inventive step (Article 56 EPC). Given this explicit guidance in ‘Lee’, the skilled person, in his attempt to solve the underlying problem of developing a vaporizer that allows a portion of a cartomizer receiving chamber of the shell to be visible from the outside, would have found the claimed invention on the basis of its knowledge and skills, namely by providing the shell in the device already known from ‘Pan’ to include a window provided at the cartomizer receiving segment, as an obvious modification. Patents as indications of common general knowledge of person skilled in the art (Article 56 EPC). While it is in general questionable that a particular published patent application or a patent specification can be considered as an indication of common general knowledge, however the statement of the author of the patent that a teaching is widely spread at the time can used as evidence of the fact that this teaching forms part of common general knowledge.
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.
IPPT20241010, UPC CFI, LD Düsseldorf, Seoul Viosys v epert e-Commerce - II
Patent revoked (Article 65 UPCA). Lack of inventive step (Article 56 EPC). On this basis, a person skilled in the art who approaches the embodiment shown in (prior art) Figures 23 to 26 on the basis of the description will come to the conclusion that the light-emitting diode forming the subject matter of this embodiment has several, but at least two electrodes (140).
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.
