Brief outline of the cases of the EPO
EP 3 666 797 B1 relates to antigen binding proteins that bind to proprotein convertase subtilisin kexin type 9 (PCSK9) and methods of using and making the antigen binding proteins.
The opposition filed by compagnies of the Sanofi group and Regeneron has been rejected by the OD.
Both opponents appealed the decision.
Appeal is pending before a board of appeal at the EPO. OP are scheduled for three days in April 2026.
EP 3 646 825 B1 relates to a system comprising a prosthetic valve and a delivery catheter.
This patent has not been opposed.
Procedure before the UPC
EP 3 666 797 B1
In decision UPC 1/2023, the CD Section Munich decided revocation of the patent.
In decision UPC_CoA_528-529/2024, the CoA decided that the patent is valid, i.e. reversed the decision of the CD Munich.
In reasons 209, the UPC CoA noted that “The OD also concluded that claim 1 must be considered to have IS, albeit in part based on different considerations”.
An analysis of the reasons of the OD, the UPC CD Section Munich and CoA UPC will not be carried out here.
EP 3 646 825 B1
In decisions UPC_CFI_255/2023 (revocation) and UPC_CFI_15/2023 (counter-claim for revocation), the CD Section Paris decided maintenance as amended according to AR II. The patent as granted and AR I contained added-matter.
The CFI LD Munich decided that the patent was infringed as upheld by the CFI CD Paris
In its decision the CoA UPC confirmed maintenance in amended form according to ARII and the infringement of said patent.
Boths cases are interesting as the CoA has defined how in its eyes IS has to be assessed at the UPC
The UPC CoA’s principles of assessing IS
Problem to be solved
For the UPC CoA, the object of the invention has first to be determined. This the “objective problem”. This “objective problem” must assessed from the perspective of the skilled person, with its CGK, as at the effective date of the claim.
In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution.
This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in context of the description and the drawings, thus also considering the inventive concept underlying the invention, the technical teaching, which must be based on the technical effect(s) that the skilled person on the basis of the application understands is (are) achieved with the claimed invention.
The relevant field of technology
The relevant field of technology is the field relevant to the “objective problem” to be solved as well as any field in which the same or similar problem arises and of which the skilled person skilled of the specific field must be expected to be aware.
The skilled person
The skilled person has no inventive skills and no imagination and requires a pointer or motivation that, starting from a realistic starting point, directs it to implement a next step in the direction of the claimed invention.
A realistic starting point
A starting point is realistic if the teaching thereof would have been of interest to a skilled person who, at the relevant date, wishes to solve the “objective problem”.
This may for instance be the case if the relevant piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention.
There can be more than one realistic starting point and the claimed invention must be inventive starting from each of them.
Obviousness of the solution
As a general rule, a claimed solution must be considered not inventive/obvious when the skilled person would take the next step prompted by the pointer or as a matter of routine, and arrive at the claimed invention.
The claimed solution is obvious when at the relevant date the skilled person, starting from a realistic starting point in the state of the art in the relevant field of technology, wishing to solve the objective problem, would, and not only could, have arrived at the claimed solution.
Inventive step may also be found if the patent claims disclose a non-obvious alternative to solutions known in the prior art.
Reasonable expectation of success
A reasonable expectation of success implies the ability of the skilled person to predict rationally, on the basis of scientific appraisal of the known facts before a research project was started, the successful conclusion of that project within acceptable time limits.
The more unexplored a technical field of research, the more difficult it was to make predictions about its successful conclusion and the lower the expectation of success. Envisaged practical or technical difficulties as well as the costs involved in testing whether the desired result will be obtained when taking a next step may also withhold the skilled person from taking that step.
On the other hand, the stronger a pointer towards the claimed solution, the lower the threshold for a reasonable expectation of success.
The fact that other persons or teams were working contemporaneously on the same project does not necessarily imply that there was a reasonable expectation of success. It may also indicate that it was an interesting area to explore with a mere hope to succeed.
Comparison with the PSA as practiced at the EPO
Similar
A realistic starting point can be a piece of prior art already discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention.
A realistic starting point discloses several features similar to those relevant to the invention as claimed and/or addresses the same or a similar underlying problem as that of the claimed invention.
The objective problem should not contain pointers to the claimed solution.
The skilled person has no inventive skills.
It is not what the skilled person could do, but what it would do when starting from a realistic starting point.
To show IS, different “starting points” can be considered (at the EPO, only if necessity arises).
Different
The “objective problem” at the UPC is the problem that the inventor set himself, and not the problem resulting from the effect of the difference when applying the CPA. This is considered the “subjective problem” in the PSA.
At the UPC, alternative solutions are defined with respect to the problem the inventor wanted to solve. At the EPC an alternative solution is defined in the absence of any effect(s) resulting from the difference with respect to the CPA.
The skilled person is always to be defined.
There are various starting points possible, there is no CPA.
The skilled person needs a pointer to be prompted to the invention.
At the EPO, to show lack of IS, it is sufficient to disclose one way to show that the invention is obvious. At the UPC it appears that all combinations of documents with different starting points have to be examined, even if IS can be denied.
At the EPO the notion of reasonable expectation of success is rarely used outside chemical/pharmaceutical/biotech areas of technique. Whether other teams work in the same area, appears irrelevant at the EPO.
Comments
Whilst some CFI applied the EPO-PSA, albeit in a slightly different form, the CoA UPC does not follow the EPO’s approach. It would have been surprising if this would have been the case. The reason is simple: it was not “invented here”.
Some people think that the UPC approach is more “holistic” than at the EPO.
This explains the comment in the Sanofi case that, the OD came to same conclusion but with different considerations.
That the description has to be consulted at the UPC is due to Art 69 EPC and its Protocol.
It will be interesting to see whether interpretations contained in the description, diverging from interpretations the skilled person would derive from the plain wording of the claim will be replaced by those contained in the description. In other words is the UPC prepared to interpretative somersaults?
That the CoA UPC insisted on the notion of reasonable success has to do with the nature of the invention in EP 3 666 797 B1. At the EPO this notion is rarely used in outside chemical/pharmaceutical/biotech areas of technique.
Civil courts always define the technical field, the skilled person and “interpret” the claims, as they do not have the technical knowledge to decide on the precise meaning of each claimed feature.
The EPO TBA, do not need to delve so deep in interpretation of claims and definition of the skilled person, so that do only rarely need to define the latter. They can decide more directly on what is CGK of the skilled person.
Divergent decisions between the UPC and the EPO
As experience shows that over 60% of OD’s decisions are set aside by the boards of appeal of the EPO, it will be interesting to see whether, in the Sanofi case, the board confirms the OD’s decision or not.
If the patent is held valid or invalid by a board and by the UPC, then the decision of the UPC will be confirmed, as the UPC will in general decide earlier in view of the shorter procedural delays.
If the patent is held invalid by a board of appeal of the EPO, and the UPC holds the patent valid, then the decision of the UPC will not be followed and the patent will be invalid in all countries in which it has been validated, even in the UPC member states.
It will then have to be seen whether an infringer will recoup all the costs and penalties which have been charged to it by the UPC.
If the patent is held valid by a board of appeal of the EPO, and the UPC holds the patent invalid, then the decision of the UPC will as well not be followed and the patent is in principle valid in all countries in which it has been validated, even in the UPC member states.
It will then have to be seen whether a proprietor will recoup all the costs which have been charged to it by the UPC.
If the patent is maintained in amended form, i.e. more limited, the question will remain, but to a lesser extent.
From information I have received from a legal member of the UPC CoA, the situation is dealt with differently in different countries. In France, for instance, there is no reimbursement possible. This lead to the chair of the UPC CoA to assert that the French solution will be adopted. Nothing is less sure than this.
The question of how to deal with diverging decisions as to the validity of European patents between the EPO and the UPC, has been carefully dodged when the UPC was signed and ratified.
In a famous decision on the stay of proceedings with parallel opposition proceedings at the EPO, the chair of the UPC went as far as to claim that for the sake of harmonisation, a subsequent deciding body should follow the decision of the UPC. This is not harmonisation, but jurisdictional imperialism.
Comments
31 replies on “EP 3 666 797 B1- EP 3 646 825-Decisions of the CoA -How to assess IS at the UPC”
It is a truly intriguing proposition that if the UPC holds a patent invalid that it can spring back to life by virtue of a BoA decision.
Would a national procedure perhaps be available for the losing party at the UPC in which a patent was maintained to be reimbursed their costs if the BoA revokes the patent, along the lines of a German Restitutionsklage?
@ Pete “Perfect”,
I was fully aware that if a patent is invalidated by the UPC, it might not spring back to life by virtue of a BoA decision.
What I wanted to provoke is actually to think of a mechanism on how the proprietor losing at the UPC can be reimbursed from the costs it had to pay to the winning party and the royalties he has been missing by the invalidation of the patent.
For the same token, if a patent is held valid and infringed by the UPC, but invalidated by virtue of a BoA decision, then the patent will never have existed as the revocation of the patent by the EPO applies to all contracting states. Any costs and penalties paid by the infringer should then be reimbursed.
It is inevitable not to realise the existence of a very big asymmetry in both situations.
When the EPO finally revokes a patent, the revocation is applicable to all contracting states, even those of the UPC, and the patent has never existed. Should the patent spring back to life just because the UPC said so?
When the EPO maintains a patent but the UPC revokes it, the situation is detrimental for the proprietor as, in principle, the patent only survives in the non-UPC states. Such a situation is actually not tolerable.
The possibility of diverging decisions between the EPO and the UPC in matters of validity could never be excluded, and should have been taken into account when the UPCA was set up. Parliaments ratifying the UPCA have never been informed of such problems. It is easy to realise why: nothing possibly negative should transpire.
The havoc created by Brexit has complicated the situation, but the holy cow UPC should in no way be endangered. Vested interests were to important. The proponents of the UPC never got tired to herald that the UPC will become the leading court for patents in Europe. This can be true in matters of infringement, but not in matters of validity.
If you had read carefully what I said in my comments, this problem has been carefully dodged in the UPCA and by the UPC proponents.
As the UPCA is an international agreement, the solution cannot be at national level, but at an international level. A German Restitutionsklage is certainly possible, but it is only valid for Germany. Such a restitution claim is unknown n France.
Why should the losing party have to go before national jurisdictions to get its money back? This problem should have been dealt with when the UPCA was set up.
On people calling themselves “perfect”:
By the way, I do deeply dislike people calling themselves “Perfect”. Nobody is perfect.
People calling themselves “Perfect” have an over swelling ego and a big head. For those people, doors should be enlarged at the head level, so that their big head can go through. Don’t tell me it’s a joke. It shows what you really think of yourself. To other people this trait does neither generate sympathy nor empathy. Some passwords are also revealing.
Mr Thomas,
It is your right to deride the approach of the CoA UPC departing from the EPO-PSA as only motivated by a « not invented here » syndrome. But whether this syndrome plays a role in the CoA UPC’s approach or not says nothing about the reasons for the divergence between the UPC and the EPO.
A major reason in my view lies the difference of context. The UPC courts, because they handle both infringement and revocation actions, have to first address the issue of claim interpretation. This is a requirement to ensure that the interpretation of claims and there is no Angora cat. A prerequisite for claim interpretation is a definition of the person skilled in the art.
It is only logical that once this definition is available, the UPC gives it a key role in the assessment of inventive step and in that, departs from the EPO-PSA approach which starts from the definition of a closest prior art without an initial definition of the skilled person.
As to obviousness at the EPO and the UPC, perhaps francis hagel has not seen the last three comments in this earlier thread:
https://blog.ipappify.de/t-1044-23-on-the-use-of-publicly-available-products-as-cpa-under-g-1-23/
which discuss the point that whereas the EPO approach works from an “objective” technical problem, the UPC courts have decided instead to use a “subjective” problem as their basis of their enquiry into obviousness.
Personally, I find it intellectually poor of the UPC judges. Is that because they simply don’t understand the power of EPO-PSA to do justice between the adversarial parties? Or is it because they want more wiggle room than strict application of EPO-PSA allows them? Or is it because i) the sponsors of the UPC want to see litigation at the UPC sprawl as widely as money can buy and ii) the UPC judges are solicitous of, and attentive to, the requirements of their employers.
Perhaps francis hagel has a different explanation? I do hope so.
Dear Max Drei,
When you read my reply to Mr Hagel, the immediate conclusion should be that I fully agree with you.
By using the term “objective problem”, but with a totally opposite meaning , the UPC is either willingly creating confusion, or wanting to differentiate itself at any cost from the EPO.
I have always found the creation of the UPC a well planned lobbying action, orchestrated mainly by large internationally acting litigation lawyer firms. Governments and parliaments have been lured into something which was not an absolute necessity.
Deep pockets should be deeper filled. Just look at the composition of the Committee having set up the RoP UPC. It was a self-selected group of lawyers working for internationally active litigation firms, helped by a group of national judges attracted by the potential salary increases they hoped to obtain by joining the UPC.
It is well known that one in particular complained that, the with the delays in opening the UPC, he was losing a lot of money.
Whether the UPC is a progress for European industry, and especially European SMEs, is doubtful, as the costs of litigation before the UPC are already extraordinarily high, and will become even higher.
As of the beginning of 2026, the procedural fees will be increased by a third. I do not think that since June 2023, the inflation has increased by a third. Higher procedural fees means at the same time higher lawyer fees…..
The hamster wheel for making money has been started and is accelerating steadily.
Mr Hagel,
I have read your comment with interest, but cannot agree with your views.
The context cannot justify the difference in assessment of IS as the validity of the patent is a prerequisite for a possible infringement.
Boards of appeal have recently insisted on the fact that a different interpretation in terms of validity between the EPO and the UPC should be avoided. G 1/24 and the board decisions applying it, have clearly gone in this direction. With a different way of assessing IS, the chance of diverging decisions between the UPC and the EPO has increased.
Had you carefully read the section “Comments” in the blog entry, you would have seen that I have given clear reasons why civil courts have to interpret claims and define the skilled parson. This is not a criticism, it is a matter of fact.
Civil courts always define the technical field, the skilled person and “interpret” the claims, as they do not have the technical knowledge to decide on the precise meaning of each claimed feature.
The EPO TBA, do not need to delve so deep in interpretation of claims and definition of the skilled person, so that do only rarely need to define the latter. They can decide more directly on what is CGK of the skilled person.
Having to interpret the claims and define the skilled person would not have been inconsistent with the application of the PSA by the UPC.
I thus maintain that the CoA UPC departing from the EPO-PSA is only motivated by a « not invented here » syndrome. As a new court, meant to become the leading court in Europe, it had to come up with something different.
By using the term “objective problem”, the UPC is actually creating a confusion, as the “objective problem” at the UPC is the “subjective problem” at the EPO.
All this about fixing who is the “skilled parson” is, for me, a Red Herring. Whether at the EPO, or the UPC or in front or at the Patents Court in London, the parties are going to be urging on the tribunal their way of judging whether the step from the state of the art to the claimed subject matter was or was not inventive. That “step” is of course a step made by the notional skilled person (not “parson” I hope) so the parties will always be striving to help the court to come to an accurate assessment of that imaginary person, whether in London, in Paris or in Munich. Judges in London will be just as impatient as those in Munich, if a party asks them to swallow a dubious definition of the skilled person. First rule of litigation: don’t try the patience of the court.
As to the obviousness enquiry, it is of course deeply unpalatable for a judge to be told that a mere Patent Office has a more rigorous, objective and fair way of enquiring into obviousness than the way that the judge, subjectively, feels is the right way. Can it “Not invented here” if you will. For it is more a question of how big an ego a UPC Appeal Court judge enjoys, how much self-confidence they possess and, further, of that old saying “Who shall control the controllers?”.
Dear Max Drei,
Once more, I can only but agree with you about your latest comment.
When lecturing about OP my first message is: if you want a positive result for your client,do not start antagonising the deciding body.
As far as your old say “Who shall control the controllers?” is concerned, I would like to point out at two decisions, one of the UPC presidium and one of the CoA UPC.
Due to the problem created by Brexit, the UPC presidium decided in May 2023, even before the opening of the UPC, that the duties allocated to the London Section of the CD according to Art 7(2) UPCA would be distributed between Paris and Munich.
In a later decision the CoA UPC decided that, contrary to Art 9(1) UPCA, according to which any panel of the CoA should be composed by 3 LQJ and 2 TQJ, a composition with 3 LQJ would be sufficiency as matter of efficiency.
The legal basis of those 2 decisions is inexistant. Even a LQJ of a LD could not give me any indication in this respect.
Where have you seen a court, interpreting on its volition its founding legal rules?
The decision of the Administrative Committee of the UPC rewriting Art 7(2) UPCA is also lacking any legal basis contrary to all what has been claimed by all the sycophants of the UPC. Art 87(2) UPCA has never been designed to overcome the consequences of Brexit.
What is regrettable is that legally educated people, i.e. former national judges, have become accomplices of those negations of the rule of law. But the good pay at the UPC might have allow them to turn a blind eye towards this blatant breach of trust.
Or “Penelope Pitstop” if you prefer that.
According to the CoA of the UPC, the object of the invention is to be assessed taking into account the prior art. In particular, quoting from §132 of the recent Meril v. Edwards decision, “It first has to be established what the object of the invention is, i.e. the objective problem. This must be
assessed from the perspective of the person skilled in the art, with their common general knowledge, as
at the application or priority date (also referred to as the effective date) of the patent. This must be done
by establishing what the invention adds to the state of the art”.
Compare with the EPO procedure for establishing the objective technical problem the Guidelines state “In the context of the problem-solution approach, the technical problem means the aim and task of modifying or adapting the closest prior art to achieve the technical effects that the invention offers over the closest prior art. The technical problem thus defined is often referred to as the “objective technical problem”.”
While the two approached are different, I see the UPC’s indicated methodology as one which takes into account as much as possible the approach used by the EPO as well as the approaches which the national courts have adopted. Thankfully the UK approach, which I would summarise as only being able to combine a prior art document with the common general knowledge of the skilled person has not been followed.
PP, reading your comment, what jumps out at me is the expression “as much as possible”. Why, pray, is it impossible for the UPC to adopt in full the EPO’s approach to obviousness?
Instead, the UPC (in Edwards v Meril, para 8) lays down the law, that:
“This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the specification and the drawings, thus also considering the inventive concept underlying the invention (the technical teaching), which must be on the technical effect(s) that the person skilled in the art, on the basis of the application, understands is (are) achieved with the claimed invention.”
Note that word “comparing”. The claim must be compared, not with D1 (the CPA, a single source) but rather with “EVERYTHING made available to the public by writen or oral description, by use or in any other way”. Ding, Ding. Ka-Ching! Heaven for litigation lawyers looking to freight the case with so much baggage as to exhaust the resources of the other side and force it into a “Why don’t you just settle” frame of mind. A bit like Vlad Putin’s ruthless approach to dispute settlement, you might think. Is the court deaf and blind to its duty to render patent litigation fit for purpose, efficient, speedy and fair?
Has the UPC Court of Appeal ever told us why it is impossible to adopt EPO-PSA? Come to think of it, has anybody yet explained to us convincingly where EPO-PSA falls short? As far as I know, judges who have no experience of EPO-PSA in practice dismiss it with the thought that obviousness is complicated and so it can’t possibly be so simple to decide as the EPO makes out.
I say that it is a scandal that it has chosen to shut its mind to the only known way to litigate obviousness not only fairly and accurately and in a way that is accessible to engineers, scientists, investors and business managers, but also (and just as important) cost-efficiently. What do you say to that, PP?
Dear Max Drei,
Irrespective of the different concept underlying the notion of “objective” problem, the UPC is obliged to look at any combination of prior art submitted by the parties and primarily by the claimant in revocation. The reason is quite simple: the judges have no technical knowledge, so that they have to assess every possible combination. As I have said before, this is not a criticism, it is a matter of fact.
I agree with you, that it is tempting for a litigant at the UPC to bring as many combinations of documents as possible.
This is a nice way to increase attorneys revenues.
At the EPO, opponents know very well that bombarding the deciding body with lots of combinations of documents is useless, as one good combination is enough to kill a patent or to reduce its scope. What is sometimes a bit exaggerated is the number of AR.
As far as settling cases is concerned, I knew a judge at the Dresdner Oberlandesgericht called Kayser. He was actually known as der “Vergleichskaiser” as he forced parties to settle as much as possible. This had the advantage of not having to write a decision.
The UPC is a machinery for big companies able to afford high litigation costs. But too many attacks also rebuts the court. See the decision of the CD Milan in the bioMérieux case commented in the blog.
As far as efficiency is concerned, the CoA UPC has managed to decide that some decisions can be taken by a panel of 3 LQJ, therewith blatantly ignoring Art 9(1) UPCA.
Daniel what I am worried about is not how many docs get thrown into the mixer but, rather, how the technical problem gets to be identified.
Under EPO-PSA it is done relative to the CPA. The parties will argue but the argument is intensely focussed. But if you decree that the problem is to be fixed by comparing the inventor’s disclosure with “the state of the art” then argument will rage, all day and into the night, what is “the technical problem” that is alleged to have been solved by “the invention”.
OK, once you have identified the prior art “starting point”, whether in the UPC or at the EPO, the rest of the analysis can proceed smoothly. But I have doubts as to the objectivity at the UPC, when the court decrees what is the technical problem which shall be the starting point of the obviousness analysis and am sceptical how many lawyer hours it will take, to help the court identify accurately and fairly what is the all-important “objective” technical problem.
Dear Max Drei,
To be fair to the UPC, it has not decreed that the problem is to be fixed by comparing the inventor’s disclosure with “the state of the art”. For the UPC, the “objective” problem is the problem the inventor has defined himself, in other words, the “subjective” problem at the EPO.
As the inventor did not have all the prior art available, but he should have had, he might think of a very intricate problem which puts his invention in a much more favourable light.
In other words, the inventor can introduce a bias in the problem he has allegedly solved. This is a good reason why at the EPO, the problem to be solved has to be objective, i.e. with respect of prior art nearest to the invention, but unknown by the inventor at the time of his invention.
By choosing as problem to be solved, the inventor’s problem, the objectivity of the UPC gets a first dent. It gets a second dent, when the UPC requires a pointer towards the solution in the further prior art. The net result, is a position very close to that of the German Federal Court, which is well known as being a repair shop for badly drafted patents. Under interpretation (the famous Auslegung), you can bring in a lot in favour of the patentee. Adding the necessity of a pointer makes things even merrier.
In order to make things more complicated, a large number of documents and combination of documents can be thrown in the pit. The more documents and combinations, the more things get complicated and the lawyer fees increase.
It might take a while to try understanding how the PSA works, but once the penny dropped, it is much easier to use when it comes to assess IS.
In order to avoid diverging decisions on validity between the EPO and the UPC, it would have been more intelligent to follow a route which has shown its efficiency and has led to good results. Adopting the PSA would not have taken a bite out of the UPC crown.
@ Pete who thinks he is “Perfect” or unsure about his gender,
Whilst you acknowledge that the UPC’s and the EPO’s approach are different, I would refrain from citing the Guidelines when it comes to the interpretation of the EPC. Only the EBA is entitled to interpret the EPC. What is said in the Guidelines is irrelevant for the boards which have a final say in matter of validity and are not bound by the Guidelines.
The two approaches are fundamentally different which is first demonstrated by using the same term for a fundamentally different notion. This is likely to create confusion, but this might have been the aim.
The PSA does also not require a hint in the prior art in order to oppose it to a claim. If I am not mistaken, this is a typically German position.
Your vision on the UK approach appears either biased or incorrect as you seem to ignore that in decisions on IS, the EPO also can combine a piece of prior art, called the CPA, from which the “objective” problem is derived, and use it alone or in combination with CGK. Often the CGK allows at the EPO to bring a link between the CPA and a further piece of prior art.
Picking up on PP’s point, I think what s/he meant was that in the UK the courts traditionally resist combining prior art documents – even if it is only a two-fold combination – unless there is an explicit pointer (such as a cross reference) or unless the context makes it absolutely crystal clear that the skilled person would have done so in practice. What is more common is that they will look *only* at the modifications the skilled person would have made to a prior art document, in light of the common general knowledge.
This does not mean that the EPO never uses common general knowledge – far from it, and I don’t think that was what PP was trying to suggest. Rather it is that the UK will tend to rely more heavily on the common general knowledge where the EPO would tend to look for a combination document.
@ Jackson Lamb.
By the way another interesting pseudo, but certainly less problematic than PP.
Thanks for your explanations. I have learned something.
On the other hand, cross-examination as practiced in English courts is something rather unique and, to my knowledge, not practiced anywhere else.
If PP would have explained himself as now JL has done, I would not have commented.
I therefore wonder whether PP and JL are not one and the same person. In another line of this blog, defending PP, and now explaining what PP meant to have said, looks suspicious.
I can assure you that I am not the same person as Pete Perfect or Penelope Pitstop. I simply thought his/her point was interesting, and wished to comment on it further as I perceived that it had been misunderstood.
Or Pat Pending (omitting the protected title)
It pains me to read the comment by the author that the UPC “has not decreed that the problem is to be fixed by comparing the inventor’s disclosure with “the state of the art”. For the UPC, the “objective” problem is the problem the inventor has defined himself, in other words, the “subjective” problem at the EPO.”
This is in direct contradiction to the case law of the CoA, as quoted in my earlier comment. Once again, “It first has to be established what the object of the invention is, i.e. the objective problem. This must be assessed from the perspective of the person skilled in the art, with their common general knowledge, as at the application or priority date (also referred to as the effective date) of the patent.”
The objective problem is not determined by the applicant, it is determined from the perspective of the person skilled in the art. Also, this is done by establishing what the invention adds to the state of the art.
Thanks for that, PP. It is indeed the step of establishing “what the invention adds” to “the state of the art” that troubles me. So much scope for a fresh dump of waffle, when it comes to a debate about what hundreds of pages of AI-generated bumph adds to the entire known universe. Much more focussed and disciplined is EPO-PSA, with its enquiry relative to D1 alone.
There are some who benefit financially, in proportion to the amount of hand-waving advocacy and obfuscation that the court-specified obviousness enquiry generates. Follow the money, I suggest.
Dear Max Drei,
Further to what I have replied to PP, the SA, see below, I do agree with you that what has been devised by the UPC CoA is in indeed a clear invitation to a fresh dump of waffle…..
I can confirm this. In French, lawyers are well-known as “les baveux”. When looking for a translation in Deepl.com, “droolers” comes out. Looking for a synonym in Deepl.com, it reveals, oh surprise, “lawyers”.
You put the finger where it should be put: follow the money. The more waffle, the more obfuscation, and the higher the lawyers revenues. I have nothing to add.
@Mr Thomas and MaxDrei,
I pointed out the difference of contexts between EPO and UPC in respect of their scope of competence (validity only vs. validity + infringement) but the difference between EPO and UPC is much deeper, there is a culture divide : mostly technical at the EPO vs. mostly legal at the UPC (which is a requirement : the UPC has to deal with a host of issues unrelated to patent validity such as evidence collection, jurisdiction, competititon law, contract law, etc).
It is common to hear from patent people complain about the lack of technical background of the judges. In their view, only judges with a technical background would be really competent and legitimate to handle patent-related proceedings. It seems to me this is the underlying basis for the anti-UPC sentiment expressed by Mr Thomas (to whom I am thankful for his detailed comments, even if I sometimes disagree) and MaxDrei.
In my view, the divergences between the EPO and the UPC as to the assessment of inventive step reflect this culture divide.
The implementation of the PSA by the EPO reflects the dominance within the BOAs of an engineer’s mindset : the PSA is the solution for the assessment of inventive step. This is not the dominant mindset within legally qualified judges, who do not want to be bound by an approach they perceive as rigid. In addition, UPC judges are influenced by the law of their country, an accepted source per Art 24 UPCA.
It is thus not surprising that while the UPC approach as laid out in the Amgen/Sanofi and Edwards/Meril decisions take inspiration from the EPO-PSA, it has differences, some significant. It is also different from the approach of the courts in UPC countries.
Thanks for that francis. My knee-jerk reaction follows.
The English court sees its task as to “don the mantle” ie “put on the clothes” of the notional person skilled in the art. That person is not a lawyer. Rather, it is the engineer or scientist to whom the patent is addressed.
EPO-PSA is the best tool yet invented, to get non-technical judges into that necessary mindset. For the UPC to choose sub-optimal tools for its obviousness enquiry is a dereliction of its duty to follow the law and do justice between the parties.
As the saying goes “You judge the quality of a workman by the state of their tools”.
Mr Hagel,
You appear to have fully misunderstood the reasons of my anti-UPC resentment. It has absolutely nothing to do with the fact that the UPC is composed primarily by LQJ and the BoA of the EPO with TQJ.
Being comparable as such to a civil court it, it is normal that the UPC panels are primarily composed by LQJ. It is a matter of fact that LQJ have, besides rare exceptions, hardly any technical knowledge. Considering that I therefore have a bias against the UPC is totally wrong and I am not prepared to accept this.
The absence of technical knowledge explains to me the necessity LQJs to be very prudent when dealing with technical matters, and therefore have to define the skilled person and interpret the claims as well as the prior art. I am simply of the opinion that the BoA are in a much easier position when it comes to dealing with technical matters, as their background is a scientific one.
My anti-UPC is of a totally different nature. It is the whole set up of the UPC, the way the UPCA has been forced upon national parliaments, and, last but not least, the fact that it is the result of a heavy lobbying action by litigation lawyers acting internationally which grounds my reservations towards the UPC.
I am also of the opinion, that it is a court created for big players having very deep pockets and able to afford the costs of litigation before the UPC. In view of the costs involved in litigation before the UPC, an SME is more or less without a chance. If a big player infringes its patents, it must be extremely sure to win an infringement action, otherwise it will have to bear the costs the big player.
Conversely, the threat of a big player of an infringement action against a SME can easily lead the SME to compromise and accept a licence, even if the infringement is not certain.
Why do you think that Poland and the Czech Republic signed the UPC, but refuse to ratify it? Slovenia and Portugal were gratified by an arbitration chamber to make them ratify. Professional representatives in Portugal warned about the dangers of the UPC for its local industry. They were not heard by the political authorities.
The way the presidium of the UPC, the CoA and its Administrative Committee (cf. Milan) act in clear violation of the VCLT and in the end blatantly ignore the rule of law, have reinforced my resentments towards the UPC. And now as of 01.01.2026, the UPC court fees will increase by a third. To my knowledge inflation has not risen by a third since June 2023. Higher court fees means higher lawyer fees. The hamster wheel is turning happily.
When I stared at the EPO Munich in 1979, there was no PSA at the horizon. It was developed in the 90ties in chemistry and has proven to be a very efficient way to objectivise considerations when assessing IS.
I don’t think at all that the UPC approach as laid out in the Amgen/Sanofi and Edwards/Meril decisions take inspiration from the EPO-PSA. To me, the contrary is true, as it starts by giving a standard term in the PSA (“objective problem”) a totally different meaning. It is certainly much nearer the German approach and its famous interpretation (“Auslegung”).
Even with the interpretation of claims and prior art and the definition of the skilled person, it would have been possible for the UPC to come much nearer to the PSA. Wanting to depart from the PSA, the UPC has laid the foundation of diverging decisions with the EPO.
When the chair of the UPC claimed that for the sake of harmonisation, the instance deciding subsequently should take over the conclusion of the first deciding body, why did the UPC not take over the PSA?
Having said this, it is clear that I agree with Max Drei in his reply.
To the person who thinks he is perfect,
I am sorry that it pains you to read what I have written. I can however provide you with some pain killer.
One is immediately available is to repeat here what I have said in my original blog and has been said by the UPC CoA:
“For the UPC CoA, the object of the invention has first to be determined. This the “objective problem”. This “objective problem” must assessed from the perspective of the skilled person, with its CGK, as at the effective date of the claim.
In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution.
This must be done by establishing what the invention adds to the state of the art, not by looking at the individual features of the claim, but by comparing the claim as a whole in context of the description and the drawings” .
The inventor has always a problem to solve, and this problem has to be stated in the application, with possibly some relevant prior art, cf. R 42(1,c) EPC.
The UPC CoA continues by saying that it is necessary “to also consider the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) that the person skilled in the art, on the basis of the application, understands is (are) achieved with the claimed invention”.
This implies that the starting point to assess inventive step is, taking into account the CGK, starts from the problem the inventor wanted to solve.
When looking at the Merril decision, § 54 and 137, defining the objective problem, “the patent aims at improving the design of a balloon-expandable transcatheter prosthetic heart valve”. “To achieve this aim, the patent teaches to use a system as defined by the patent claims, which inter alia reduces the crimping profile of the valve and provides stability during crimping and subsequent expansion (paragraph [0039] of the patent)”.
In § [0005] of EP 3 646 825 B1, one reads: “A disadvantage of many sealing devices is that they tend to increase the overall profile of the prosthetic valve in the compressed state….. Thus, a need exists for sealing devices that do not contribute significantly to the overall crimp profile of the prosthetic valve.”
The need=the problem to be solved, and the solution are thus clearly those defined by the proprietor.
Even if it pains you, you have not convinced me that my position is incorrect.
For the surplus people thinking they are “perfect” can also be held as “know-it-all” or even better “smart …”. I have difficulties in understanding why anyone would give themselves such ridiculous nicknames, even as a pseudo.
@ Jackson Lamb,
I have not misunderstood what PP-SA has said. I simply did not agree.
I fully acknowledge that you cannot be the same person as PP-SA, and I hope you can accept my apologies for having entertained the idea that you could be the same person.
I could have got it myself, as your comments have been respectful and not trying to belittle or show that you were better than others.
PP said “the UK approach, which I would summarise as only being able to combine a prior art document with the common general knowledge of the skilled person”. I can confirm this is a correct summary of the UK approach. You said “Your vision on the UK approach appears either biased or incorrect”. You clearly misunderstood what PP was saying because they were unbiased and they were correct. They said nothing about the EPO approach. We have a saying in the UK, “play the ball, not the man”, which seems apt here.
@AKD,
We might have different visions and opinions, and it is right so. If I misunderstood something, so be it.
As you bravely hide behind a pseudo, it was a priori not even sure that you are actually a UK representative. However, a quick search shows that you are located in in the North of London and you provider is BT. So you are most probably a UK representative.
I act openly, and this makes a great difference. Have you ever spent some time at realising the difference?
The day you and your buddy give your real names when commenting, I will be much more inclined to accept criticism.
If you think that I played the man and not the ball, there is a very good reason for this: I deeply despise people who think they are perfect.
Mr Thomas,
I am surprised by your attacks on commenters who write under a pseudo. The use of a pseudo protects free expression esp. for people whose freedom of expression is restricted or hampered by professional obligations. And without this protection, there would be much fewer commenters on professional blogs including on your blog.
I am also surprised because I remember the time – this is not so old – when you were “hidding behind a pseudo” as well. “Let he who is without sin cast the first stone” , Jesus said in the parable of the woman taken in adultery.
Mr Hagel,
For once I will partly reply in French:
Occupez-vous de vos oignons et fichez moi la paix. Je n’ai que faire de vos propos moralisateurs et puant la naphtaline.
Ne me venez surtout pas avec la religion. J’y suis profondément allergique.
I have nothing as such when people are using a pseudo, and I have full understanding for this.
It is perfectly normal to protect one’s professional obligations.
I simply find some pseudos’ offensive, and this is my good right to say so in my blog.
I find it unbearable, when people think they are better than others, and this also is my good right to say so in my blog.
What I said here to you, also applies also to the chap who has accused me to play the man and not the ball.
Comments steeped in self-righteousness are not welcome.
In future, you can save yourself the time spent on comments like these.
They don’t help matters at all.
Has the penny dropped?
One thing I have learned from many years of posting comments to patent law blogs is that it is easy to take offence. Offended, my first thought is to retaliate. Over the years, however, I have learned that this does no good and can do harm. Look what happened to the Patently I blog for example. This blog gets more traffic than any other I know. One reason is that, like on Patently O, comments are not delayed by any filter. But it has been said to me at least once , Daniel, that the urge to comment is dampened by the possibility of getting from you what one might term a “sharp” answer. In a multi lingual thread, the possibility of misunderstanding is ever present. Sometimes, biting one’s tongue achieves more than firing off a sharp reply. I have no idea what relevance PP sees between this blog and a long defunct children’s cartoon series but Hey, who cares? The main thing is, surely, we both want here as many useful comments as readers are willing to post, right? Regardless of his pseudo, and ignoring any self righteousness the poster exhibits, the PP comments are, at least for me, not without value.
Dear Max Drei,
I have read your comment with great interest. I respect your views, even if we do not always agree.
It will however not come as a surprise, but I do not intend to add or withdraw one iota to what I have said.
There is no filter in the present blog, and it is good so. I do not intend to change anything in this respect.
I could however easily delete comments if they are not to my liking. I will never do so, or only if I am pushed beyond limits, but this is at the price of sometimes getting a reply which can be considered sharp.
I do not oblige people to comment, and if they are frighten of a sharp reply, it is not my problem.
I agree with you that in a multi lingual thread, the possibility of misunderstanding is ever present, and I know too well that English is not my mother tongue. So if comments might be held sharp, it is not an aim I pursue just for sake of antagonising.
I value any comment, but there are limits. It is not at my age that I will abandon defending my views, and I don’t claim that they are always right, but I will defend those.
For various reaons, which are of no relevance to anybody, I had to fight all along my life. I was not born with a silver spoon in the mouth, and I never took anything for granted. From black and white, I have realised over time that there are lots of shades in between.
I never got from PP a positive comment. Its the mindset of people thinking they are perfect which is very annoying, not ebven so much what they say, but the undertone in the comments in in my opinion not the most courteous. Always complaining and knowing better. I simply had enough. This is why I reacted as I did. Nobody is perfect.
I only react sharply when I consider the comments offensive in tone or when it is blatant nonsense.
You might thus consider the present reply as “sharp”, then so be it.