Summary of the seven UPC Decisions

Munich Central Division

16 July 2024

03 : 00 – 07 : 03

Assessment of inventive step for a patent relating to anti-cholesterol antibodies

• Sanofi filed a revocation action against the Amgen patent
• Amgen simultaneously filed an infringement action against Sanofi and Regeneron
• The cited prior art starting point was Lagasse

• Rule 182 RoP (applications for preserving evidence).
• Ex parte relief based on risk of evidence loss; security required.

• The court found the patent lacked inventive step based on Lagasse as a realistic starting point
• Lagasse motivated the skilled person to develop antibodies falling within the claim scope

• First major decision of the Unified Patent Court
• Approach similar to EPO methodology
• Later reversed on appeal, revealing divergence in interpretation

Paris Central Division

21 January 2025

7 : 09 – 11 : 08

Inventive step of a patent relating to e-cigarette cartridges with translucent parts

• NJOY challenged the VMR patent based on lack of inventive step
• Two prior US patent applications were cited as starting points
• The objective technical problem concerned development of a vaporizer with translucent parts allowing fluid visualization

• Identification of teachings of interest to skilled person
• Assessment of obviousness based on objective technical problem
• Different approach from Munich : objective problem defined in relation to patent itself, not to prior art starting point

• Single objective problem and inventive concept regardless of multiple starting points
• Prior art failed to disclose translucent vaporizer
• Patent maintained

• Demonstration of methodological divergence within UPC divisions
• « Holistic » approach different from traditional EPO problem-solution approach

Munich Local Division

4 April 2025

11 : 10 to 14 : 55

Inventive step of a patent relating to a prosthetic heart valve

• Edwards filed an infringement action against Meril based on the valve patent
• Meril filed a counterclaim for revocation
• Multiple prior art starting points were identified

• Application of EPO’s problem-solution approach as primary tool
• Requirement for realistic starting point and motivation for skilled person to take next step
• Alignment with EPO and Board of Appeal jurisprudence

• Munich Local Division explicitly rejected methodological divergences within the Unified Patent Court
• Patent maintained; skilled person would not have been motivated to combine the cited documents

• Attempt to resolve methodological divergence by establishing problem-solution approach as standard test
• Important procedural guidance for the UPC

Court of Appeal

25 November 2025

15 : 08 to 25 : 15

Appellate review of inventive step assessment for anti-cholesterol antibody patent

• Appeal against the first instance decision of Munich Central Division
• The EPO had also rejected an opposition filed by the same parties
• Central question: sufficiency of motivation for PCSK9 targeting at the priority date

• New three-step inventive step test (Court of Appeal’s approach)
• Step 1: Identification of objective problem and inventive concept
• Step 2: Identification of one or more realistic starting points
• Step 3: Assessment of motivation and reasonable expectation of success

• Court of Appeal reversed the first instance decision
• Lagasse was a realistic starting point but did not provide sufficient motivation
• At the priority date, the therapeutic effect of PCSK9 targeting was unknown and remained unknown several years after the priority date
• Patent maintained on appeal

• Establishment of new appellate standard for inventive step assessment in the UPC
• Broader approach than EPO regarding multiple starting points
• Emphasis on predictability and reasonable expectation of success

Court of Appeal

25 November 2025

25 : 22 to 28 : 00

Inventive step of heart valve patent despite provision of alternative to known solutions

• Appeal against first instance decision of Munich Local Division
• Meriel argued the patent solved no technical problem
• Four realistic starting points identified: Levy, Alan, Benicio, DiMatio

• Same three-step test as in Amgen v. Sanofi
• Alternative Solutions : a patent may demonstrate inventive step even without solving a new technical problem, if it discloses a non-obvious alternative to known solutions

• Court of Appeal rejected Meril’s argument that patent must solve new technical problem
• None of the four starting points provided sufficient motivation to combine with other prior art elements
• Patent maintained on appeal

• Clarification that inventive step does not require technical improvement
• Non-obvious alternatives qualify
• Consistency of appellate test across different fact patterns

Paris Local Division

16 January 2026

28 : 02 to 29 : 40

Inventive step with in-depth prior art analysis

• Extensive analysis of prior art in the technical field
• Common general knowledge of skilled person established
• Five different document combinations analyzed with multiple realistic starting points

• Appellate three-step test with comprehensive prior art presentation
• Definition of objective problem in view of state of the art

• Patent found to be non-obvious; invention maintained
• Correct application of appellate test

• Demonstration of proper application of appellate test by lower court
• Establishment of best practices for comprehensive prior art presentation

Paris Central Division

12 January 2026

29 : 42 to the end

Assessment of inventive step with reference to appellate standards

• Direct application of appellate test by the court
• Reasoned approach compared to IMC Creation

• Three-step test from Court of Appeal
• Definition of objective problem primarily in relation to patent itself rather than comprehensive prior art analysis

• Streamlined application of appellate test
• Varied approaches to prior art presentation remain acceptable

Flexibility in application of appellate test ; acceptable variability in methods of prior art analysis