Springboard selection in the UPC and EPO

Apologies to all my sports and swimming contacts on LinkedIn. This is not an article about the Olympic swimming pool and the intricacies of selecting the optimal materials and designs for the springboards used in the Olympic diving competion. This article is about closest prior art selection, the usual starting point for a discussion at the European Patent Office (EPO) about whether a claimed invention is inventive (i.e., not obvious) in view of what was already known when a patent application was filed.

Inventive step at the EPO

Whether something can be considered obvious or inventive is very much a subjective question. Many things that may seem obvious to you, may not be as straightforward for me. Some solutions may be very obvious to most people today, but were groundbreaking inventions 10 or 20 years ago. In normal life, this subjectiveness is not a problem. Discussion and differing opinions colour our lives. It would be very boring to always agree on everything with everyone.

In patent offices and court cases, however, subjectiveness is less welcome. Since inventive step was introduced as a requirement for patenting an invention, there have been attempts to find objective tests for determining what is obvious and what is not. In the EPO, over the last 50 years, a structured approach has been established that is used to consider inventive step. This approach is commonly called the problem-solution approach, and in proceedings before the EPO it is practically the only accepted approach for defending or attacking the inventive step of a claim. This problem-solution approach starts with establishing a starting point for the inventive step assessment. This starting point is typically called 'the closest prior art' or 'the most promising springboard to the invention'.

The first UPC decision on inventive step

After the EPO grants a patent, judgment on the infringement and validity of this patent becomes a responsibility of the national courts in the (about 40) individual states wherein the European patent may be validated. Since last year, a new Unified Patent Court (UPC) took over this responsibility for (currently) 17 of those individual states. While national courts and the UPC all need to apply the same basic patent law, the exact process and criteria for deciding on isssues like, for example, inventive step may differ between courts, with significant effect on the outcome of economically important patent infringement cases.

European patent practitioners have been keenly awaiting the first substantive decisions on the validity of European patents litigated in the UPC. Is the UPC going to follow the EPO approach for establishing inventive step? Will it be easier or more difficult for a patent owner to prove infringement and defend the validity of their patent in the UPC, than it was before in national German, French, Italian, or Dutch courts? Last week, the first substantive decision in an important patent case was published and many articles have already been written about it.

Do the EPO and UPC think alike?

In this first substantive decision the first instance Central division of the UPC (presiding judge Ulrike Vo? , legally qualified judge András Kupecz , technically qualified judge Casper Struve ) decided to revoke the patent in question for a lack of inventive step. In many of the articles about this decision, the authors have attempted to compare the EPO and UPC approaches to judging inventive step. Most, if not all, authors arrived at similar conclusions. According to those authors, the UPC

• "[does] not rigorously proceed according to the EPO’s Problem-Solution-Approach" ( Thorsten Bausch , Kluwer Patent Blog, attorney at one of the firms representing the successful parties in this case),
• "chose not to follow the EPO's problem-solution approach" ( Rose Hughes , IPKat),
• "was not prepared to adopt the [problem-solution approach]" (Daniel X. Thomas, IP.appify, former examiner at the EPO), or
• "explicitly disapproved of the ‘closest prior art’ approach and thereby implicitly rejected the ‘problem-solution approach’" ( Chris de Mauny et al., IP Watchdog)

The common opinion amongst those authors seems to be that not looking for a starting point that is objectively the 'closest' prior art goes against the established EPO practice. However, having read and re-read the UPC decision, I don't see much light between the UPC and EPO approaches.

In both the Headnotes (no. 3) and the Ground For the Decision (point 8.6), the UPC judges indicate that "there can be several realistic starting points" and that "it is not necessary to identify the 'most promising' starting point". This, however, is by no means a new approach to what is commonly referred to as 'closest prior art selection'. On the contrary, this approach is very much in line with the standard practice of the EPO Boards of Appeal as explained in section I.D.3.4.1 of the Case Law Book (emphasis added).

In T 694/15 the board was of the opinion that the terminology "closest prior art" was somewhat misleading and that it was perhaps preferable to use the terminology "starting point (in the prior art)". It could be economical to start from prior art that is in some sense close to the invention, in the hope that the consideration of this single starting point would be enough to establish whether the claimed subject matter would have been obvious. However, if this failed, before arriving at the conclusion that the subject matter would not have been obvious, it was necessary to consider other possible starting points. The board considered that what was decisive for establishing obviousness was not the closeness of the starting point but the overall likelihood of the path, given the starting point.

Or, as can be found in section G VII 5.1 of the Guidelines for Examination in the EPO, "there is no need to discuss which document is 'closest' to the invention".

Having read the above-cited and many other articles on this topic, I get a feeling that many IP practicitioners may be hoping for, rather than observing, a new way to assess inventive step.

Of course, this is just the first substantive decision on inventive step by the UPC. This first instance decision is not unlikely to be appealed and many other decisions will follow. Based on just this decision, however, it seems that the UPC judges see no reason to diverge from the well-established problem-solution approach of the EPO. For the moment, springboards for the 2024 Paris Olympics (EPO and UPC territory) can be selected in the same way as for the 2012 London Olympics (EPO territory only).