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ARTICLE · 26 DECEMBER 2024

With The EPO And UPC Adopting Different Frameworks For Inventive Step, Is There Potential For Conflicting Decisions?

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The EPO and UPC have different frameworks for assessing inventive step. While the EPO focuses on technical differences and effects, the UPC takes a more holistic approach, considering whether a skilled person would implement the solution. Efforts to harmonize approaches are ongoing.

United KingdomIntellectual Property
Hsu Chung
Hsu Chung
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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

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