UPC: The First Revocation Decision

The first decision in a revocation action by the central division (Munich) has been published on July 16, 2024. Court also answers the questions in the Referral To The Enlarged Board Of Appeal – G 1/24. See the decision here.

Here are the headnotes: 

Interpretation of Patent Claims:

When interpreting a patent claim, a skilled person does not focus on the literal or philological meaning but instead determines the technical meaning of the terms with the help of the description and drawings. The technical function of the individual features, both separately and together, is deduced from their role in the context of the entire patent claim. The patent description can act as a unique dictionary for the patent.

Same Invention under Article 87 EPC:

An invention is considered the "same invention" as referred to in Article 87 EPC (priority right) if a skilled person can derive the subject matter of the claim directly and unambiguously from the prior application, using general knowledge.

Assessment of Inventive Step:

The assessment of the inventive step begins from a realistic starting point within the prior art, and there can be multiple valid starting points. Identifying the "most promising" starting point is not necessary.

Obviousness of Claimed Solution:

A claimed solution is obvious if a skilled person is motivated to consider and implement it as the next step in developing the prior art. It matters whether the skilled person would anticipate particular difficulties in taking these next steps. The mere fact that other solutions are suggested in the prior art or pursued by others does not automatically mean the claimed solution is non-obvious. The key question is whether the claimed solution is indeed non-obvious.

Denial of Inventive Step:

For denying an inventive step, it is sufficient if a skilled person, without making an inventive contribution, would arrive at a result that is covered by a claim. It is not about whether the skilled person would inevitably achieve the same result.

Indication of Inventive Step:

A technical effect or advantage of the claimed subject matter compared to prior art can indicate an inventive step. However, a feature chosen arbitrarily from several options generally does not contribute to an inventive step.