Case Law Update: Does the problem-solution approach rule at the UPC?
Written By
Of Counsel
UK
I am a British and European patent attorney in our Intellectual Property group in London. I am involved with UK patent infringement actions relating to standard essential patents (SEPs), FRAND setting litigation and globally coordinated litigation, as well as SEP essentiality reviews and valuation. I am also authorised to represent clients before the Unified Patent Court (UPC) that opened in Europe in June 2023.
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Our latest case law update based on the 4th April UPC decision in Edwards Lifesciences v Meril.
🧁 Short & Sweet:
The problem-solution approach is the approach to be adopted by the UPC for inventive step determination - so says the Munich LD.
🤷 Issues considered:
The problem-solution approach (PSA) to inventive step is the approach that the EPO has firmly adopted for decades. Even though the UPC has jurisdiction over patents issued by the EPO, decisions by the UPC over the past 18 months have shown that the UPC was not tying itself to this approach.
However, one division of the UPC has now firmly ruled in support of the PSA.
Last week, the Munich LD issued a decision stating that "this Panel takes the decision to apply the PSA as practiced by the EPO, including and the BoAs, to the extent feasible and to state this explicitly as there is a need for legal certainty for both the users of the system and the various divisions of the Unified Patent Court. Applying the PSA further aligns the jurisprudence of the Unified Patent Court with the jurisprudence of the EPO and the BoA."
🫵 What does this mean for you?
This is a very definitive statement from the Munich LD, which is the busiest division of the UPC and so responsible for the majority of the decisions issued so far by Court of First Instance of the UPC. There are existing UPC Court of Appeal decisions that have considered this point and clarified that the PSA is not an approach that the UPC must follow.
So if you want to run with a different approach to inventive step, then this is still an option - at least for now. But including a problem-solution approach as well might also be worth it.
Link to judgment here: https://lnkd.in/e3h2sBjP
Edwards Life Sciences was represented at the UPC by Bird & Bird's Boris Kreye and Elsa Tzschoppe.
See our website for more on the UPC.
"the problem-solution approach developed by the European Patent Office shall primarily be applied as a tool to the extent feasible to enhance legal certainty and further align the jurisprudence of the Unified Patent Court with the jurisprudence of the European Patent Office and the Boards of Appeal."
