Inventive step at the UPC: a critical appraisal

The approach followed by the Unified Patent Court (UPC) when assessing inventive step has been laid down by the Court of Appeal for the first time in two decisions, handed down on November 25 2025, relating to the cases UPC_CoA_528/2024 and UPC_CoA_529/2024 (Amgen v Sanofi/Regeneron) and case UPC_CoA_646/2024 (Meril v Edwards).

The methodology outlined in these decisions looks deceivingly similar to that developed and applied by the Boards of Appeal of the EPO, the so-called problem-solution approach, thereby giving the impression that the appraisal of inventive step at the UPC does not differ from the practice of the EPO.

This impression is reinforced by an order of the UPC Court of Appeal issued on April 17 2026 in UPC_CoA_901/2025 (Abbott v Sinocare), where the court appears to have embraced the ‘Comvik approach’ applied by the Boards of Appeal of the EPO when assessing inventive step of inventions involving a mix of technical and non-technical features.

However, on a closer look, as explained in this article, the approach taken by the Court of Appeal for assessing inventive step, the so-called holistic approach, differs significantly from the problem-solution approach applied at the EPO, in particular as regards the formulation of the so-called objective problem. Furthermore, the way the Court of Appeal concretely applied the principles of the Comvik approach to the facts of UPC_CoA_901/2025 seems to be at odds with the rationale underlying that approach, which is to ensure that only features contributing to the solution of a technical problem are taken into account when assessing inventive step of a technical invention.

The differences that can be ascertained between the holistic approach taken at the UPC and the problem-solution approach applied at the EPO raise several questions:

• Why has the UPC decided to depart from the established approach of the EPO that practitioners in the field of European patent law are thoroughly familiar with?

• What are the consequences of this departure for practitioners and users of the UPC?

A reply to these questions requires a critical appraisal of the approach embraced by the UPC.

This article undertakes this analysis and highlights a number of issues arising from the introduction of the new standard laid down by the Court of Appeal for the assessment of inventive step, some of which have a bearing on the debate on the distribution of cases at the UPC.

The holistic approach proposed by the Court of Appeal of the UPC for assessing inventive step has been outlined in UPC_CoA_528/2024, UPC_CoA_529/2024, and UPC_CoA_646/2024. It comprises the following steps, in which some expressions and phrases have been highlighted in italics:

1. “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, 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 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.”

2. “In order to avoid hindsight, the objective problem should not contain pointers to the claimed solution. The claimed solution is obvious when at the effective date the person skilled in the art, starting from a realistic starting point in the state of the art in the relevant field of technology and wishing to solve the objective problem, would (and not only ‘could’) have arrived at the claimed solution.”

3. “The relevant field of technology is the specific 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 person skilled in the art in the art of the specific field must be expected to be aware.”

4. “A starting point is realistic if the teaching thereof would have been of interest to a person skilled in the art who, at the effective 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.”

5. “The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation that, starting from a realistic starting point, directs them to implement a next step in the direction of the claimed invention. As a general rule, a claimed solution must be considered not inventive/obvious when the person skilled in the art would take the next step, prompted by the pointer or as a matter of routine, and arrive at the claimed invention.”

6. “For an inventive step to be present, it is not necessary to show improvement of the technical teaching as defined by the patent claims over the prior art. Inventive step may also be found if the patent claims disclose a non-obvious alternative to solutions known in the prior art.”

It is apparent from this summary of the UPC approach that the objective problem mentioned at point 1 is not what practitioners familiar with the problem-solution approach used at the EPO would understand as the objective technical problem. In particular, the objective problem is not determined by comparison of the claimed invention with a specific piece of prior art, let alone a single piece of prior art that is ‘closest’ to the claimed subject matter.

This will be explained in the following through an analysis of point 1 but is already apparent from the fact that the ‘realistic starting point’ that, according to point 2, should be used to assess whether the skilled person would have arrived at the claimed solution is not used for determining the objective problem. As also explained below, the state of the art mentioned under point 1 is definitely not the prior art identified by the EPO during the search to which any European patent application is subjected before proceeding to grant.

According to point 1, to establish the objective problem, one must determine the contribution of the claimed invention to the state of the art. Although not stated explicitly, this entails a comparison between two terms.

The first term is not the claim as such; it is the claim as a whole, considered in the context of the specification and the drawings.

Considering the claim in the context of the specification and the drawings means that claim has to be interpreted on the basis of the entire application and mandatorily requires that the inventive concept underlying the invention be taken into account.

This inventive concept represents the technical teaching that the skilled person must derive, upon consideration of the whole application, on the basis of the technical effects that the skilled person understands are achieved with the claimed invention.

In the assessment of the technical effects that are achieved by the invention, the skilled person is assumed to possess and apply their common general knowledge as at the application or priority date of the patent under consideration (the so-called effective date).

Since point 1 of the UPC approach requires a determination of the contribution of the invention to the state of the art, the second term of the comparison required to identify this contribution would appear to be the state of the art. However, none of the decisions laying down the approach to be applied at the UPC for assessing inventive step clearly spells out what the expression ‘state of the art’ actually means. Does it refer to a single document or to plural items of the prior art? Is the ‘state of the art’ limited to what the patent mentions or does it extend to documents retrieved by the EPO or by a party contesting the validity of the patent?

Point 1 requires “comparing the claim as a whole in the context of the specification and the drawings” (without specifying what a claim is compared with) and determining the technical effects that are understood to be achieved with the claimed invention “on the basis of the application”.

It thus appears that the second term of the comparison is limited to what the application as a whole and, in particular, its specification states about the prior art, either by expressly referring to specific items of the prior art such as patent applications or in the form of a generic discussion of the background art, without necessarily singling out any specific item of the prior art.

Hence, in stark contrast to the problem-solution approach applied at the EPO, the identification of the objective problem at the UPC is not conducted by reference to a single piece of prior art such as the closest prior art. The objective problem is determined ‘holistically’, taking into account the entirety of the application and ‘distilling’ its inventive concept on the basis of a comparison of the claimed invention, interpreted in the context of the specification and drawings, with the state of the art discussed in the application, having due regard to the common general knowledge of the skilled person.

The holistic approach taken at the UPC thus appears to adopt the ‘perspective’ of the applicant at the application or priority date; i.e., at the effective date. It is the prior art known to the applicant at that date and discussed in the specification that should be used to determine the contribution of the invention to the state of the art.

At first glance, the ‘recipe’ for determining the objective problem laid down at point 1 might suggest that the objective problem would coincide with the so-called subjective technical problem; i.e., with the technical problem originally presented in the application and solved by the claimed solution.

However, the requirement that the inventive concept to be considered when determining the objective problem “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” (emphasis added) suggests that the objective problem according to the UPC approach does not necessarily coincide with the technical problem presented in the application. What seems to be decisive is what the skilled person understands to be the technical effects that are actually achieved over the prior art.

In other words, under the UPC approach, the objective problem should be established from the perspective of the skilled person at the effective date and it would be the understanding of the skilled person – rather than that of the applicant – that is decisive for determining the technical effects achieved by the invention, and, as a consequence, the actual contribution of the invention to the state of the art.

Anyone with a modicum of experience with proceedings before German courts will have no difficulty in recognising that the approach laid down by the Court of Appeal of the UPC is nothing but that prescribed by the German Federal Court of Justice (Bundesgerichtshof, or BGH) and routinely applied by German courts for assessing inventive step (for a summary of the approach taken by the BGH and a comparison with the problem-solution approach used at the EPO, see Hermann Deichfuß, “Die ‘Erfinderische Tätigkeit’ nach BGH und EPA – Gemeinsamkeiten und Unterschiede zwischen der deutschen Rechtsprechung und der Rechtsprechung der Beschwerdekammern des europäischen Patentamts”, GRUR Patent, 3/2024).

According to the case law of the BGH, the establishment of the objective problem should merely serve to identify – without knowledge of the claimed invention – the starting point of the skilled person’s efforts to make a contribution to the state of the art (see BGH decision of July 15 2021, X ZR 60/19, GRUR 2022, 67 (Stereolithographiemaschine), and BGH decision of January 13 2015, X ZR 41/13, GRUR 2015, 352 (Quetiapin)).

As put by a German judge who did not mince his words in criticising the problem-solution approach used at the EPO, the goal of the approach prescribed by the BGH is to simulate the perspective of the skilled person at the effective date, when the invention was not yet known (Jochem Gröning, “Aufgabe, erfinderische Tätigkeit und das Problem der rückschauenden Betrachtung in der Rechtsprechung des BGH und beim EPA”, GRUR 2021, 206: “Das Ziel ist erkennbar, im Ausgangspunkt die Perspektive des Fachmanns am Prioritätstag, als die Erfindung noch nichtbekannt war, zu simulieren”).

According to the same judge, this approach is diametrically opposed to the problem-solution approach: the point of view is not the claimed teaching of the patent in suit from which one would proceed back retrospectively – as in the problem-solution approach – to determine the technical problem and the concrete task that the skilled person must be presumed to have envisaged solving at the priority date.

The BGH approach would instead aim at avoiding an assessment of inventive step on the basis of the ‘completed’ invention; i.e., the invention as arrived at and completely devised by the applicant at the end of a ‘journey’ that started from the prior art known to the skilled person at the effective date. At the core of the BGH approach there would be an attempt to unveil the inventive potential of the invention at the priority date.

The Court of Appeal of the UPC has not provided any reason for its decision to adopt the holistic approach, instead of the problem-solution approach that has been applied at the EPO for more than 40 years, and has merely hinted at the national origin of the approach now prescribed at the UPC (see point 5 of the Headnote of UPC_CoA_464/2024). Explanations given by judges of the UPC in several public conferences, albeit accompanied by the usual disclaimer that those explanations only reflected the judge’s personal opinion, suggest that the adoption of a holistic approach at the UPC is due to the perception that the problem-solution approach and, in particular, reliance on the closest prior art for determining the objective problem is tainted by hindsight.

The decision of the Court of Appeal not to embrace the problem-solution approach as the standard for assessing inventive step seems to be based on the same criticism expressed in a famous decision of the BGH, Olanzapin, where the BGH rejected the use of the notion of closest prior art for determining the problem solved by a claimed invention. As explained in that decision, which document of the prior art is closest to the invention, and how the skilled person could have set out to arrive at the inventive solution, becomes apparent only in hindsight (BGH, decision of December 16 2008, GRUR 2009, 382, marginal note 51 – Olanzapin).

Hence, formulating the objective problem by comparison of the claimed invention to an item of the prior art – i.e., the ‘closest prior art’ – chosen having knowledge of the claimed invention would inevitably risk being tainted by hindsight, according to this criticism.

Under the approach prescribed at the UPC, the choice of the starting point for the assessment of inventive step is to be made only after the objective problem has been determined in accordance with the methodology discussed above (see point 2 above).

The starting point must be ‘realistic’. As dictated at point 4 of the holistic approach, the starting point must be an item of the prior art whose teaching would have been of interest to a person skilled in the art who, at the effective date of the claimed invention, wishes to solve the objective problem determined according to point 1.

This is another point where the holistic approach differs from the problem-solution approach: the starting point for examining the question of whether a claimed invention involves an inventive step is selected on the basis of a problem that has been determined solely on the basis of what can be derived from the application in its entirety.

Despite the superficial similarity between the exemplary criteria suggested at point 4 of the UPC approach for choosing a realistic starting point and the criteria applied at the EPO for selecting the closest prior art, the choice of a realistic starting point under the UPC approach is governed by the objective problem established at point 1: only prior art items that would be of interest to a skilled person wishing to solve the problem established on the basis of the application alone are realistic.

Under the UPC approach, it is the problem established on the basis of the application alone – albeit from the perspective of the skilled person equipped with their common general knowledge at the effective date – that governs the choice of the starting point(s) for the assessment of inventive step.

In the problem-solution approach, it is the other way round: it is the piece of prior art ‘closest’ to the claimed invention that governs the determination of the objective technical problem to be used in the assessment of inventive step.

It must also be pointed out that even the criteria for the selection of a realistic starting point do not appear to correspond exactly to those applied at the EPO for the selection of the closest prior art. As stated in G-VII, 5.1 of the Guidelines for Examination at the EPO, “In selecting the closest prior art, the first consideration is that it must be directed to a similar purpose or effect as the invention or at least belong to the same or a closely related technical field as the claimed invention. In practice, the closest prior art generally corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention” (emphasis added).

In other words, selection of the closest prior art is governed first and foremost by the consideration that it must purport to achieve a similar purpose or effect as the claimed invention; structural similarity between the closest prior art and the claimed subject matter only ranks second.

In contrast, point 4 of the holistic approach apparently sets out two criteria that need not be fulfilled concurrently or in a given order, since it allows the selection of a piece of prior art that already discloses several features similar to those relevant to the invention as claimed; i.e., a piece of prior art that is structurally similar only or that addresses the same or a similar underlying problem as that of the claimed invention.

Whether this apparent difference is intended or is merely the result of an inadvertently inaccurate formulation of point 4 is unclear; nevertheless, it must be noted and represents a further point of discrepancy between the UPC and the practice of the EPO.

The adoption of a new standard for assessing inventive step at the UPC raises the question of whether the new holistic approach is indeed better than the established problem-solution approach and whether, in particular, it is free from hindsight.

There are several reasons why it can be seriously doubted that the new approach is superior and free from the flaws allegedly undermining the applicability of the problem-solution approach.

Questioning the objectivity of the problem formulation

Establishing the problem to be used in the assessment of inventive step solely on the basis of what can be derived from the application in its entirety, as required by the holistic approach – even if ideally made from the perspective of the skilled person at the effective date – does not make the thus-established problem objective (in the sense of being uninfluenced by subjective perceptions) or free from hindsight.

First, as even the most ardent supporters of the BGH approach acknowledge (see Gröning, as cited above, page 208), the applicant may consciously present the invention with respect to the state of the art by overstating its real advantages or, on the contrary, by underplaying its effects. In both cases, the picture of the invention as presented in the specification is not a true representation of what the invention actually achieves over the prior art.

The understanding that the skilled person may gain, on the basis of the whole application, of the technical effects that are actually achieved with the claimed invention will inevitably be influenced by any inaccurate or even distorted representation of the invention and will flow into the determination of the object of the invention. As a consequence, the thus-influenced determination of the object will inevitably affect the formulation of the objective problem.

Particularly in technical fields such as chemistry – where it is known not always to be easy to decide, by merely examining the formula of a compound, whether that compound has certain properties or may plausibly achieve certain effects (see G S A Szabo, “The Problem and Solution Approach to the Inventive Step”, (1986) 10 EIPR, 293; in particular, the section “The need for an effect”) – an objective assessment of the technical effect actually achieved by a claimed invention may be arduous or become unduly influenced by statements in the specification that, without any investigation, might at first glance seem acceptable but that, following a proper investigation of the prior art, may turn out to be incorrect, baseless, or even false.

It is not apparent why the assessment of inventive step should be based, in such cases, on a formulation of the object of the invention that will from the outset be at odds with the technical reality and will inevitably be artificial.

To illustrate the kind of problems that might arise in such case, it may be useful to consider the invention underlying the famous EPO Board of Appeal decision T 939/92.

The alleged invention concerned triazole compounds that were alleged to have herbicidal activity; no prior art was discussed in the specification. Claim 1 claimed a formula encompassing a very large number of alternative compounds, all of which were described as having herbicidal activity; the formula involved the presence of several substituents at various positions.

It would be unrealistic, and it was found to be impossible in the concrete case of T 939/92, to believe that the skilled person could decide, simply by reading the application, that the claimed compounds had herbicidal activity. It was only upon retrieval of new prior art not mentioned in the specification that it became possible to conclude that not all the claimed compounds actually had herbicidal activity (see paragraph 2.6.2). The new evidence related to documents disclosing compounds having herbicidal activity and structurally similar to those of the invention but differing by one or more substituents (see paragraphs 2.3.1 and 2.3.2).

The board applied the problem-solution approach and tentatively considered a reformulated technical problem vis-à-vis the new prior art (taken as closest prior art), consisting in the provision of further compounds having herbicidal activity (see paragraph 2.5), but it found that the invention did not involve an inventive step within the meaning of Article 56 of the European Patent Convention (EPC), because the claim extended to compounds that could not be credibly shown to have any herbicidal activity (see paragraph 2.7).

If the holistic approach were hypothetically applied to the case underlying the decision T 939/92, one would be compelled to conclude that the object of the invention should be regarded as the provision of compounds having herbicidal activity, as alleged in the application, since the skilled person would have no reason to discount this objective as being incorrect on the basis of the application.

It is unclear how a correct examination of inventive step could be carried out on the basis of a problem formulated in such a manner, if one were to follow the UPC approach. If it is accepted that the object of the invention consists of the provision of compounds having herbicidal activity and the prior art subsequently found (and considered by the board in T 939/92) does not suggest the use of the substituents in certain positions that distinguish the claim from the cited prior art, one would have to conclude that the claim involves an inventive step. This is despite the fact that the claimed substituents (or at least some of them) in the claimed positions cannot achieve a herbicidal effect and thus have no technical effect at all.

This example highlights a general problem of the holistic approach: although it does not seem to exclude a formulation of the objective problem that differs from the subjective technical problem presented in the application, as noted above, the holistic approach does not provide for the possibility of reformulating the objective problem where evidence not contained in the application is presented in the procedings and credibly shows that the technical effects that the skilled person understood to have been achieved with the claimed invention on the basis of the application are, in fact, not achieved at all or only achieved over a limited ambit of the scope of protection.

Furthermore, the holistic approach does not eliminate the risk of the assessment of inventive step being tainted by hindsight. Besides the fact that, even under the holistic approach, the determination of the objective problem presupposes knowledge of the invention – since it is based on a comparison of the claim as a whole in the context of the description and drawings – point 1 of the holistic approach relies on the description of the prior art and of its disadvantages as proposed by the applicant.

It is not apparent why consideration of this prior art and of its characterisation by the applicant should be accepted as being free of hindsight. After all, the specification of a patent is only drafted after the supposedly inventive process that has led to the claimed invention has been concluded, and thus in hindsight. It would be naïve to believe that the characterisation of the invention vis-à-vis the prior art presented in an application is an unbiased representation of the state of the art at the effective date.

The fact that this characterisation of the invention vis-à-vis the prior art is to be reviewed critically by the skilled person – who, according to the holistic approach, has to understand on the basis of the application which technical effects are actually achieved with the claimed invention – does not free this approach from the risks of hindsight.

Conceptually, the critical review undertaken by the skilled person in the holistic approach by comparing the claim as a whole in the context of the specification and drawings – and thus vis-à-vis the prior art discussed in the application – is not dissimilar from the comparison that, in the problem-solution approach, the skilled person makes between the claimed subject matter and the closest prior art.

However, while the comparison in the problem-solution approach always focuses on the technical effects achieved by distinguishing technical features of the claim, point 1 of the holistic approach vaguely requires that the claim as a whole in the context of the specification and drawings be compared with whatever the application says about the prior art.

Whereas in the problem-solution approach the terms of the comparison are clearly identified and the body tasked with the assessment of inventive step is clearly instructed to focus solely on the technical effects achieved by the objectively ascertainable distinguishing features, the holistic approach does not provide clear guidance on the terms of the comparison and how the technical effects actually achieved with the invention should be worked out. For example:

• How is the skilled person to proceed if the application does not discuss any prior art? If the skilled person is supposed, in this case, to resort to common general knowledge, what in the common general knowledge may be used for the purpose of determining the technical effects actually achieved with the claimed invention?

• With regard to the consideration of the claim as a whole in the context of the specification and drawings, where are the limits to which the specification and drawings may be taken into account when considering the claim for the purpose of deriving the inventive concept underlying the invention?

• And, finally and most importantly, what are the criteria for departing from the technical problem presented in the application?

The holistic approach fails to define objective criteria to be applied by the skilled person for the purpose of deriving this inventive concept because, instead of focusing on the differences objectively ascertainable between the subject matter of the claim and a specific item of the prior art, it relies on the muddled and imprecise notion of inventive concept (which is reminiscent of the infamous Erfindungsgedanke of German pre-EPC case law) and on an equally muddled comparison with prior art described ‘at large’ in the application, rather than with specific items of the state of the art.

The UPC’s adoption of the holistic approach for assessing inventive step has at least four serious drawbacks.

First, applicants and users of the system from contracting member states where the problem-solution approach is the standard normally applied for assessing inventive step will be forced to adopt the less familiar holistic approach when arguing for or against the presence of inventive step before the UPC. The statement of the Court of Appeal that the holistic approach and the problem-solution approach are “merely guidelines to assist the establishment of inventive step as required by Article 56 of the EPC that, when properly applied, should and generally do lead to the same conclusion” does not alter the fact that the Court of Appeal will apply the holistic approach and not the problem-solution approach. This leaves users of the UPC with one realistic choice only: accepting the holistic approach.

Secondly, as explained above, the holistic approach presents a number of issues that make it less predictable than the problem-solution approach. The high predictability of the problem-solution approach and its suitability for a unitary assessment of inventive step in any technical field has been acknowledged even by its fiercest critics (see Gröning, as cited above, page 210).

Thirdly, since the holistic approach is nothing but that routinely applied by German courts in the assessment of inventive step, its adoption favours German applicants, users of the UPC, and legal practitioners, since they are already accustomed to that approach and therefore do not have to adapt.

Fourthly, there is a risk that the assessment of inventive step at the EPO and before the UPC becomes less harmonised in the long run, particularly – but not exclusively – in the appraisal of inventions involving a mix of technical and non-technical features.

A case in point is offered by Abbott v Sinocare. Under point 112 of the order, the Court of Appeal apparently endorsed the Comvik approach applied at the EPO for assessing inventive step of inventions involving a mix of technical and non-technical features, by expressly referring to the decision of the Board of Appeal in the Comvik case (T 641/00) and to the decision G 1/19 of the EPO Enlarged Board of Appeal.

However, the application of the principles of the Comvik approach – which is essentially an adaptation to the problem-solution approach for assessing inventive step of inventions involving non-technical features – to the facts of the case underlying UPC_CoA_901/2025 decided by the Court of Appeal seems at odds with the Comvik approach.

The Court of Appeal regarded a feature group of the claim under discussion as being technical in nature and producing a technical effect of improved assistance to the user’s diabetes control by providing means to identify the effect of certain events on the monitored glucose levels (see point 114 of the order).

The feature group in question (labelled 1.13 in the order) claims that the display of a glucose monitoring system is configured to show certain event icons and that, in response to a user selection of a particular event icon, the display is further configured to show details of the selected event. The event icons represent events entered by the user (see point 51 of the order).

Without entering into a detailed discussion of the case, the Court of Appeal’s reasoning appears to be based on two fallacies known in the case law of the boards as:

• The ‘technical leakage fallacy’, in which the intrinsic technical nature of the implementation leaks back into the intrinsically non-technical nature of the problem; and

• The ‘broken technical chain fallacy’ (see T 1741/08 – GUI layout/SAP), which arises in connection with graphic user interfaces where a technical effect might result from a user’s reaction to information, but a chain of effects from providing information to its use in a technical process is broken by the intervention of the user.

Displaying the details of an event in response to a user selection of a particular icon is an instance of presentation of information, which is excluded as such from patentability and is thus non-technical under Article 52(2)(d) of the EPC. Displaying such details on an electronic display, which is a piece of technical equipment, does not make the presentation of cognitive information such as an event icon technical, as argued by the Court of Appeal.

Furthermore, the displaying of details of the selected event, in response to a user selection, cannot lead to the alleged technical effect of improved assistance with the user’s diabetes control, as maintained by the Court of Appeal. Leaving aside that the details of the event are a further example of cognitive information that does not represent any kind of technical information and thus fall under the non-technical category of presentation of information, the achievement of the alleged technical effect of improved assistance to the user’s diabetes control depends on:

• The intervention of the user (by selecting a particular event icon); and

• How the user would understand and use the displayed details of the selected event; i.e., how the user would interpret the cognitive information displayed and what actions the user would subsequently take.

This example shows that the Court of Appeal, albeit in principle adhering to the principles of the Comvik approach and thus of an adapted version of the problem-solution approach, in practice appears to depart from those principles or to apply them incorrectly.

Any (as of yet unproven) advantage possibly resulting from the Court of Appeal’s adoption of the so-called holistic approach for the assessment of inventive step, instead of the well-established problem-solution approach applied at the EPO, does not appear to justify the disadvantages and drawbacks that clearly accompany the new approach.

Furthermore, the adoption of the holistic approach undeniably favours German applicants, users, and legal practitioners to the detriment of applicants, users, and legal practitioners from contracting member states of the UPC, where the standard approach for assessing inventive step is the problem-solution approach.

This state of affairs will exacerbate the imbalance in the distribution of cases at the UPC, since the adoption of the holistic approach of German derivation will inevitably push applicants and users to file actions before German local divisions of the UPC, where it can be expected that the holistic approach will be applied more consistently, given that two legally qualified judges out of three in the German local divisions come from the ranks of the German judiciary.

Furthermore, the adoption of the holistic approach may be expected to reduce the predictability of the assessment of inventive step at the UPC and – particularly in the area of inventions involving a mix of technical and non-technical features, such as computer-implemented inventions – may lead to a divergence between the case law of the UPC and that of the Boards of Appeal of the EPO, to the detriment of harmonisation of European patent law.

The views expressed in this article solely reflect the author’s opinions.