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With the EPO and UPC adopting different frameworks for inventive step, is there potential for conflicting decisions?
December 2024
The EPO regularly applies the problem and solution approach when deciding whether an invention involves an inventive step. Central to this approach is identifying the technical differences between the invention and the closest prior art, and determining the objective technical problem to be solved in the light of the technical effect linked to those differences. The question of whether the technical solution of an invention is obvious is analysed with this technical problem in mind. Furthermore, a reasonable expectation of success is often required before a prior art teaching can be considered as an obvious solution to the technical problem.
From what we have seen so far, the UPC’s inventive step framework appears to be more holistic; it focuses on whether a skilled person would have been motivated to consider the claimed solution and implement it as a next step in developing the prior art. Moreover, unlike the EPO’s problem and solution approach, the UPC appears yet to be convinced of the need for a reasonable expectation of success to demonstrate obviousness.
With these divergent approaches, there appears to be potential for divergent decisions to be taken on the same facts. That said, both the UPC and EPO appear mindful of the risks of conflicting decisions[1] between the UPC and the EPO. In this article, we explore four EPO practices that, while currently not always applied, may perhaps gain a greater following in the interests of harmonisation as they arguably chime more closely with the UPC’s approach to inventive step.
Background
The EPO regularly applies the problem and solution approach when deciding whether an invention involves an inventive step. As confirmed by the Enlarged Board of Appeal in G2/21[2], this involves identifying the closest prior art; identifying the differences between the invention and the closest prior art; defining the technical problem in terms of the technical effect linked to these differences; and examining whether a skilled person would have suggested the claimed technical features to obtain the results achieved by the invention. With the latter, the question of obviousness is often influenced by whether a skilled person would have tried the claimed approach with a reasonable expectation of success[3].
The UPC, on the other hand, appears to be developing its own framework on inventive step. While there are similarities between the UPC’s and the EPO’s approaches, there are also key differences. For example, whereas the EPO often views the “most promising springboard” as the closest prior art, the UPC seems to apply a lower threshold, viewing any document that “would have been of interest to a skilled person” as a suitable starting point. Furthermore, whereas the EPO’s approach formulates the technical problem in terms of the technical effect associated with the technical differences between the invention and the prior art, many UPC decisions have considered the problem identified in the patent as the “underlying problem” to be solved. Even when the patent in dispute is silent on the underlying problem and the latter is construed from the patent disclosure, there does not appear to be a prerequisite that the problem should be formulated in terms of effects linked to the technical differences between the invention and the prior art[4]. In fact, many UPC decisions have taken a holistic approach, focussing on whether a skilled person would have been motivated to consider the claimed solution and implement it as a next step in developing the prior art. Moreover, unlike the EPO’s problem and solution approach, the UPC appears yet to be convinced of the need for there to be a reasonable expectation of success to demonstrate obviousness.
Despite these differences, some UPC decisions have acknowledged the EPO’s problem and solution approach. For example, despite not using the problem and solution approach, the Hamburg Local Division in UPC_CFI_54/2023 stated that such an approach would not have led to a different result. That said, we have seen in UPC_CFI_308/2023 (reported here) how the different approaches led to different conclusions on the relevance of the same piece of prior art.
As the UPC approaches its first 18 months, it remains to be seen how frequently these different approaches to inventive step bring about different decisions on the same facts and evidence. When faced with such risks[5], the UPC has expressed a desire to reduce the risk of conflicting decisions between the UPC and EPO. Likewise, this year’s Enlarged Board referrals, G1/24 and G2/24, both considered to approaches taken by the UPC as evidence of divergent interpretations of the European Patent Convention (EPC) that needed clarification from the Enlarged Board. Moreover, the EPO’s website[6] highlights the aims of the UPC as, not only reducing the risk of divergent decisions before the national courts in Europe, but also harmonising substantive patent law relating to the rights conferred by Unitary Patents and European patents. Overall, therefore, the mood music seems to be euphonious with harmonisation. Below we discuss four EPO practices that, while not currently consistently applied, may gain greater following as they arguably chime more closely with the UPC’s approach to inventive step.
Four EPO practices that may aid harmonisation with the UPC’s inventive step framework
- The EPO’s problem and solution” approach is optional
Because the problem and solution approach is almost ubiquitously applied by the EPO, it is easy to forget that it is not mandatory. In fact, in April this year, the Enlarged Board reminded us of the optional nature of this approach by confirming that there was no obligation to apply the problem-solution approach[7]. Even in G2/21, the Enlarged Board merely indicated that this approach was merely “regularly applied”[8]. It is difficult to envisage the approach being discarded altogether by the EPO given how central a part it has played in developing the case law of inventive step the Boards of Appeal. However, it will be interesting to see if greater flexibility is applied to the various steps of the approach.
- Starting from multiple starting points
Although the EPO’s problem and solution approach requires identifying the closest prior art, the approach does not necessarily rule out the possibility of a skilled person having a choice of several workable routes that might lead to the invention. In such scenarios, several EPO decisions have confirmed that the rationale of the problem and solution approach has to be assessed relative to all these possible routes before an inventive step can be acknowledged[9].
In T 967/97, the Board also found that, if an inventive step were to be denied, the choice of starting point did not require any justification. As a general rule, the claimed invention had to be non-obvious having regard to any prior art (T261/19). Some EPO practitioners may see these lines of case law as being relatively niche. However, these decisions are cited in the Case Law of the Boards of Appeal at CLBA, I, D, 3.1. Moreover, in some respects, these decisions show an even more generous approach to the selection of the starting point than the UPC. For example, in contrast to T967/97 in which no justification for a starting point was deemed required, the UPC appears to require the selection of a piece of prior art to be justified[10]. Furthermore, recent EPO Board of Appeal decisions have acknowledged that different approaches have been taken when selecting the closest prior art depending on the technical field of the invention in question[11]. This suggests that the Boards of Appeal have not set in their ways when it comes to selecting the closest prior art and there may be flexibility depending on the facts of the case.
- Not all technical effects support an inventive step
As discussed above, the UPC looks at inventive step holistically and regards an invention as obvious if the skilled person would be motivated to implement the claimed solution as a next step in developing the prior art. This contrasts with the EPO’s approach, which considers the question of obviousness in the light of the technical effects achieved by the distinguishing features of the invention.
This is not to say, however, that a technical effect arising from the technical difference(s) can always be relied upon to support an inventive step before the EPO. There are circumstances the Boards have disregarded technical effects arising from the distinguishing features and, instead, considered obviousness in a broader context of whether the claimed subject matter would have been obvious anyway. This broader approach is generally be taken when the technical effect in question is considered to be a bonus effect[12] arising from an already obvious teaching. For example, if it would already have been obvious for a skilled person to arrive at the invention, such a claim lacked an inventive step, even if an extra effect (possibly unforeseen) was obtained. This was the situation recently in T1079/18, where non-hygroscopy associated with a particular polymorph was seen as a bonus effect that a skilled person would inevitably achieve when screening for polymorphic forms with higher solubility.
While some Boards have found a lack of inventive step based on the bonus effect case law, many practitioners will attest that it can often be difficult to convince an Opposition Division or Board of Appeal to disregard a technical effect that can be achieved across the scope of the invention. Even when the bonus effect case law is applied, it can be applied quite narrowly. For example, recently, in T1356/21, the Board reasoned that the use of features leading to expected improvements might still be patentable if they provided an additional effect, if the use of such features involved a choice from a multiplicity of possibilities. This was contrasted with a scenario where a lack of choice created a “one-way-street” towards the additional effect and, hence, the invention. The need for such a “one-way-street”, however, is the subject of debate, and, by way of contrast, the Board in T1317/13 held that a “one-way-street” situation was not a prerequisite for a technical effect to be considered as a bonus effect that could not support an inventive step.
While there remains uncertainty as to the circumstances in which a technical effect can be disregarded as a bonus effect, there is no doubt that the bonus effect case law has made a small resurgence with Boards in a limited number of decisions showing a willingness to disregard technical effects in certain circumstances. It is possible that a broader view on what constitutes a bonus effect as seen in T1317/13 may bring us closer to a more holistic approach to obviousness, in better alignment with the approach taken by the UPC. It will be interesting to see if this line of case law continues to gain traction.
- There is not always a need for a reasonable expectation of success
The established case law of the Boards of Appeal tends to regard a course of action to be obvious if a skilled person would have carried it out with a reasonable expectation of success[13]. However, this is not to say that a reasonable expectation of success is always necessary to demonstrate obviousness. There is a growing line of case law that holds that, where neither the implementation nor the testing of an approach suggested by the prior art involves any particular technical difficulties, the skilled person would have at least adopted a “try and see” attitude. In such situations the concept of “reasonable expectation of success” does not apply, as a skilled person would prefer to verify whether the potential solution worked, rather than abandon the project because success was not certain[14].
This “try and see” attitude was affirmed in T2565/19, where the Board held there was a general incentive to apply knowledge from animal models to humans. The patentee argued that there was an alternative explanation for the result seen in rats, which would not be applicable to humans, depriving the skilled person with any reasonable expectation of success. The Board disagreed. The general incentive to apply knowledge from animal models to humans was sufficient to motivate the skilled person to try the prior art on humans because the circumstances did not merit any reasonable expectation of success.
Like the bonus effect line of case law, the “try and see” line of case law arguably has the potential to lend itself to a more holistic view of inventive step. Moreover, with a “try and see” attitude, obviousness is not predicated on a reasonable expectation of solving the technical problem based on the technical effects arising from the distinguishing features of the invention. Again, therefore, will be interesting to see if this line of case law continues to gain traction, particularly in the life science and chemical fields where the approach is more commonly applied.
Conclusions
It is probably too soon to say if the diverging approaches to inventive step will lead to conflicting decisions at the EPO and UPC. However, as discussed above, there appears to be a desire by both the EPO and UPC for better harmonisation in the way the EPC is applied to European and Unitary Patents. The case law of the EPO Boards of Appeal arguably contains decisions, which, while not currently consistently followed, have similarities with the UPC’s more holistic approach to inventive step. Should the EPO decide to move towards harmonisation, it is possible that some of these decisions will gain greater influence as they arguably share more in common with the holistic approach that we have seen taken by the UPC.
That said, while harmonisation has the potential to increase legal certainty, it is relatively uncommon for two cases run in different forums to be based on the same facts, evidence and arguments. For example, there may be greater scope for examining expert evidence before the UPC than the EPO and this may influence matters like the common general knowledge. Greater harmonisation between the UPC and EPO, therefore, may not necessarily result in the same decisions being reached, as the cases presented before the two forums may differ. Indeed, provided the 9-month opposition period has not elapsed, some parties may see a tactical advantage in using the EPO as an additional avenue for central revocation alongside the UPC, particularly since EPO proceedings are likely to be more cost effective. With the number of EPO oppositions filed reportedly in decline, we may also expect EPO decisions to be issued more rapidly, and this could potentially affect the number of UPC proceedings that are stayed pending the outcome of the decisions before the EPO. This, in itself, may reduce the risk of conflicting decisions, particularly where validity is concerned as the forum making the decision second will have the benefit of the earlier decision
Furthermore, issues like inventive step do not exist in a vacuum and the question of whether claimed subject matter possesses an inventive step will often depend on how the claim is interpreted. It has yet to be decided whether the EPO’s prevailing approach of giving primacy to the claims will change following the decision on claim interpretation of the Enlarged Board on G1/24 scheduled for next Spring. Depending on the outcome of the referral, we may still expect some differences in outcome before the EPO and UPC. Additionally, European patents may be validated in countries, such as the UK, which are part of the EPC but not the UPC. Accordingly, even with increased harmonisation between the EPO and the UPC, this may not necessarily result in harmonisation across all countries where a European patent has effect.
In conclusion, there appear to be avenues that the EPO can take to increase harmonisation with the UPC. This may take us a step closer towards harmonising how the EPC is interpreted when assessing the rights conferred by Unitary and European patents. At present, however, the differences between the UPC’s and EPO’s approaches to inventive step are only one part of the puzzle for solving the problem of harmonisation. We look forward to seeing how the interplay between the UPC, the EPO and the national courts continues to unfold.
This article was prepared by Partner and Patent Attorney Hsu Min Chung
[1] UPC_CFI-361/2023; UPC_CFI_80/2023; UPC_CoA_22/2024; G1/24 and G2/24
[4] UPC CFI 315 /2023; UPC_CFI_308/2023
[5] UPC_CFI-361/2023; UPC_CFI_80/2023; UPC_CoA_22/2024
[6] https://www.epo.org/en/applying/european/unitary/upc
[7] Point 7 of the Reasons, R8/19
[8] Point 24 of the Reasons, G2/21
[10] UPC 252/2023
