A recent decision (UPC_CFI_501/2023) concerning infringement and validity of European Patent 3,669,828 by the Court of First Instance, Munich Local Division of the Unified Patent Court (UPC) has set out that the problem-and-solution approach developed by the European Patent Office (EPO) should be the primary tool used to assess inventive step in proceedings of the UPC. The decision stated that this was to ensure legal certainty and to further align the jurisprudence of the UPC with the jurisprudence of the European Patent Office and the EPO’s Boards of Appeal.
The problem-and-solution approach
The EPO’s problem-and-solution approach is a framework for assessing whether an invention shall be considered obvious having regard to the state of the art. It has been developed by the EPO over a number of years (although its use is not, strictly, a requirement of European practice). In a simplified form, the problem-and solution approach identifies whether an inventive step is present through the application of the following steps:
It is generally accepted that use of the problem-and-solution approach provides an efficient tool for assessment of inventive step by the EPO, providing legal certainty and avoiding ex-post facto conclusions on obviousness of an invention.
Discussion of the problem-and-solution approach within the judgement
The recent decision from the UPC outlines that the problem-and-solution approach should “primarily be applied as a tool to the extent feasible” in order to assess inventive step at the UPC. The decision states that this would “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)”.
In the discussion of inventive step, the decision noted that in various previous decisions of the UPC the problem-and-solution approach had been applied or referenced, but that in some other cases a different approach had been used – namely the test for inventive step applied by the German Federal Court of Justice. The present decision remarked that both tests, if correctly applied, should lead to the same results for the majority of cases, and that the use of problem-and-solution is not enshrined in the European Patent Convention.
Nevertheless, the decision notes that, whilst there is a possibility for either test to be used before the UPC, the Division for the present case explicitly chose to apply the problem-and-solution approach. This is because there is a need for legal certainty for both the users of the system and the various divisions of the Unified Patent Court. The decision seems to infer that a single approach for assessment of inventive step would be beneficial, and the problem-and-solution approach would be preferred as it offers greater alignment with the jurisprudence of the EPO.
What this means
In general, increased alignment between jurisprudence of the UPC with that of the EPO will be welcomed by most European practitioners. The problem-and solution approach is a well-established and well-understood tool for any attorney already acting before the EPO.
Having said this, there appeared to be some minor differences in the UPC Division’s consideration of the problem-and-solution approach, not least their use of the description to interpret the meaning and construction of the claims (which, to date, has not been a tactic applied by the EPO in normal circumstances, though the EPO Enlarged Board of Appeal’s recent decision in G1/24 may now align these practices). Furthermore, the UPC Division also made some mention of whom the appropriate skilled person would be and their incentive or motivation to combine two pieces of prior art. Typically, this would not be emphasised within the problem-and-solution approach at the EPO, where, in particular, an explicit incentive to combine two prior art documents is not required and an implicit incentive is deemed sufficient.
In view of these slight differences, it is possible that we will see a slightly adapted application of the problem-and-solution approach at the UPC than compared to its application by the EPO. Time and further case law will make this clear. It is noted that there are still options to appeal the present decision, and so it remains to be seen if the Court of Appeal for the UPC would apply the same test for inventive step. Nevertheless, use of the problem-and-solution approach as a foundation for the assessment of inventive step before the UPC provides an element of predictability that will be met with cautious optimism by users of the UPC and their representatives.
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