Inventive Step and the Unified Patent Court of the European Union (UPC)

What makes an invention an invention?

In order to be eligible for protection and to be granted a patent, the subject matter of a patent application must, in particular, be new and involve an inventive step (Section 1(1) of the German Patent Act (PatG) and Article 52(1) of the European Patent Convention (EPC)). While it is relatively straightforward to determine whether an invention is new in view of the prior art, assessing the required inventive step presents a challenge. The law merely stipulates that “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.” (Section 4, Sentence 1 PatG and Article 56, Sentence 1 EPC).

Both German case law and the case law of the Boards of Appeal of the European Patent Office have, in a whole series of decisions, sought to define as objectively as possible what constitutes obviousness within the meaning of the aforementioned provisions, and what is inventive enough to be rewarded with a patent.

There is a consensus in the patent world that, before a decision is made regarding inventive step, the relevant prior art must be identified, and a person skilled in the art and their expertise must be determined. Inventive step, often simply referred to as inventiveness, should not be based on the inventor’s subjective contribution, but rather on the objective result of the invention.

The European Patent Office’s approach

The Boards of Appeal of the European Patent Office, in particular, have striven to establish objective criteria for determining the presence of inventive step. They have developed the so-called “problem-solution approach,” which is regularly applied at the European Patent Office. We were able to make our own contribution to the further refinement of said approach last year in an appeal filed against a decision of the Opposition Division. (Decision T 0095/23 of June 5, 2025). For experts, we may quote from the guiding principle of this decision: “The skilled person would therefore generally opt for a detailed embodiment as the starting point for assessing inventive step.”

In the “problem-solution approach,” a specific document is first selected as the closest prior art. This document is typically the one that has the greatest similarities to the invention. The features that distinguish the invention from the closest prior art are then identified. Considering the advantages and technical effects that these distinguishing features entail leads, in a further logical step, back to the objective technical problem solved by these distinguishing features.

The next step is to determine whether the skilled person, in seeking a solution to this objective technical problem, would have found an indication in any other document of the prior art that the problem could be solved using precisely those features that distinguish the invention from the closest prior art. If there had in fact been an incentive for the skilled person to follow up on this indication and to implement the distinguishing features into the teaching of the closest prior art, then inventive step must be denied. Otherwise, the invention is not obvious.

What is the position of the Unified Patent Court (UPC)?

As we already reported in a previous post, the Unified Patent Court of the European Union (UPC) has been operating since June 1, 2023. Among other things, it is responsible for actions for revocation of European patents—i.e. patents granted by the European Patent Office—with unitary effect in the 18 participating EU member states.

The first landmark decisions of the UPC’s Board of Appeal regarding the assessment of inventive step within the meaning of Article 56 EPC were eagerly awaited. Experts assumed that the UPC would align its criteria for assessing inventive step with the case law of the Boards of Appeal of the European Patent Office. After all, the same legal provisions must be interpreted, and the European Patent Office and its Boards of Appeal decide cases for a total of 38 contracting states of the European Patent Convention, not just for the 18 UPC member states.

The UPC has issued its first landmark decisions

It was therefore somewhat surprising when, on November 25, 2025, the UPC Court of Appeal issued two landmark decisions—with identical outcomes—on the question of inventive step, decisions which differed significantly from the EPO case law (UPC CoA 464/2024 – Meril v. Edwards; UPC CoA 528/2024 – Amgen v. Sanofi).

The criteria that the UCP will have to assess in the future appear to differ from the EPO’s objective criteria in that they take a subjective element into account: Based on the invention and the prior art described in the application, as well as the problem leading to the invention, a document from the prior art is selected to serve as a “realistic starting point.” It therefore seems that it is not essential that this document has the most in common with the invention; rather, it must fit into the inventor’s conceptual framework.

The next step is to identify the distinguishing features between the invention and the realistic starting point. If these distinguishing features are found in another prior art document, the Court of Appeal holds that one must ask whether a person skilled in the art would have considered this document and thus these features in order to solve the given problem, with a “reasonable expectation of success.” This requires strong motivating factors; a vague hope for success is not sufficient to qualify an invention as obvious.

It therefore appears that a number of documents that the Boards of Appeal of the European Patent Office would rely on to assess inventive step will no longer be relevant for the same assessment before the UPC.

What are the practical consequences?

In the future, we will therefore not only have to deal with slightly different assessment criteria between German case law (which also rules on European patents, but only with effect for Germany) and the European Patent Office, but now also with yet another set of assessment criteria from the UPC.

In light of the above, strategic considerations on which court to choose and how to ensure the availability of its jurisdiction in case of a conflict have become more important.

Sources

• UPC CoA 464/2024 – Meril v. Edwards
• UPC CoA 528/2024 – Amgen v. Sanofi
• EPO Decision T 0095/23 of June 5, 2025

Do you have any questions on this topic?
Please feel free to contact us.