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ARTICLE · 23 DECEMBER 2025

The UPC's Approach To Inventive Step

A&O Shearman
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The UPC Court of Appeal has now provided clear guidance on how the UPC should determine whether a patent involves an inventive step.

United StatesIntellectual Property
Tom Edwards
Tom Edwards
Frits Gerritzen
Frits Gerritzen
Lukas Paysan
Lukas Paysan
Beverley Potts
Beverley Potts
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The UPC Court of Appeal has now provided clear guidance on how the UPC should determine whether a patent involves an inventive step. This endorses the "holistic" approach, establishing what the invention contributes to the state of the art and then assessing whether the skilled person would (not merely could) have arrived at the claimed invention with a reasonable expectation of success.

Background

Courts of the various EPC countries have different approaches and use different guidelines when assessing whether a patent involves an inventive step under Article 56 EPC. The EPO and the Technical Boards of Appeal apply a "problem-solution-approach," and this is one of several possible approaches in France, Italy, the Netherlands, and Sweden. On the other hand, other jurisdictions, such as Germany and the UK, use other more "holistic" approaches.

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