Establishing precedent – the UPC's developing approach to assessing inventive step

On 25 November 2025, the UPC's Court of Appeal (CoA) for the first time clarified in detail the approach to inventive step in two parallel decisions. The rulings also provide guidance on added matter challenges when assessing revocation claims and clarifies when injunctive relief may be excluded for proportionality reasons.

Inventive step

In its decisions in the cases UPC CoA_464/2024 et al. and UPC CoA_528/2024 et al. both panels of the CoA have held that the UPC will assess inventive step based on its own autonomous approach. Notably, the wording of both decisions is almost identical in this respect. Overall, the approach seems to be more closely related to the German approach than the EPO's problem solution approach.

As the CoA holds, the inventive step analysis starts with establishing an objective technical problem excluding any pointers to the claimed solution. Based on such an objective technical problem the UPC then finds that a realistic starting point in the state of the art in the relevant field of the technology is used for the inventive step assessment. The relevant field of the technology is not limited to the specific field of the patent but can extend to similar fields in which a similar objective technical problem may occur.

The Court specifically states that this approach means that there can be more than one realistic starting point.

Starting from such a realistic starting point it is then assessed whether there is any pointerin the art or other motivation for the person skilledin the art directing them to implement the differentiating part in the attacked patent. Thus, a patent is generally not inventive if such a pointer clearly points towards the claimed invention or implementing the differentiating features would only constitute routine measures of the person skilled in the art.

However, the CoA also holds that inventive step does not require any technical improvement by the implementation of the claimed invention over the state of the art, but it is sufficient if the claimed invention constitutes a non-obvious alternative to the state of the art.

In assessing whether the person skilled in the art would take the next step in light of a pointer in the art, the court also takes into account if at the application/priority date the person skilled in the art would have had a reasonable expectation that taking this next step would be successful.

The burden of proof for all of these findings, in particular, also the expectation of success, falls on the party challenging the validity of the patent.

Based on these general principles, in both cases the CoA rejected the inventive step attacks and held the patents to be valid.

Added matter

The CoA has also provided some additional guidance on several other questions. In both decisions it was confirmed that when assessing whether a claim contains added matter compared with the application as filed, the court will look at the application in its entirety and will also consider any implicit disclosure. In particular, the court will also consider the application and its disclosure comprehensively even if the proprietor has initially only referred to certain specific sections in the application.

Proportionality

In the UPC CoA_464/2024 et al. decision, the CoA has confirmed that under certain circumstances injunctive relief may be restricted for reasons of proportionality in line with the Enforcement Directive (Directive 2004/48/EC) in exceptional circumstances.

In its proportionality assessment the court can not only take the parties' interests into account but should also consider third party interests. Such third-party interests with a certain relevance can particularly occur in fields related to medicine where patients may be affected. This is specifically the case and decisive if the infringing embodiment is the sole available treatment method or represents an improvement upon the available treatment methods, resulting in a notable enhancement of patient care.

In the specific case, for certain patients it was found that there was no alternative to the infringing heart valve available. For that reason, the court has excluded injunctive relief insofar as a patient's physician confirms that for a specific patient no alternative solution is available.

The Court of First Instance had issued a similar limitation, though with a more complicated mechanism to confirm if an alternative exists, that also involved assessment by the patent proprietor.

Conclusion

Both decisions are clear examples of the CoA using the cases it gets to decide in order to develop a coherent autonomous approach to how inventive step should be assessed by the court, whilst also providing guidance on case specific questions.

What is also noteworthy is the large number of headnotes provided by the CoA. This makes it clear that the CoA is trying to provide general guiding principles when issuing its first and formative decisions on important questions of law. Contrary to what can be seen in other instances of judicial practice, the CoA is not focused on providing narrow decisions limited to each specific case but seems to make an effort to allow users to easily discern the general principles it is applying.

From a user's perspective providing such general guidelines is a welcome practice that can only serve to more clearly define the law as applied by the court and bring more clarity to all parties involved.