Two recent decisions by the Court of Appeal of the Unified Patent Court (UPC) clarify the approach now adopted by the UPC bodies to assess inventive step. Sylvain Dubois reviews the two decisions and explains how they have formalised a ‘global’ standard for inventive step analysis.
The UPC Court of Appeal issued two decisions on 25 November 2025 – Meril-Edwards (UPC_CoA_464/2024) and Amgen v Sanofi/Regeneron (UPC_CoA_528/2024 / 529/2024) – which confirm the adoption of a ‘global’ evaluation for inventive step analysis.
The Unified Patent Court approach: A three-step method
The UPC Court of Appeal has stated that a claimed solution is ‘obvious’ when, at the relevant date, a person skilled in the art, starting from a realistic starting point in the prior art of the relevant technological field and wishing to solve the objective problem, would have arrived at (and not merely: could have arrived at) the claimed solution.
To apply this approach to assessing inventive step, known as the UPC approach, the Court of Appeal established a three-step process consisting of:
- Determining the objective problem,
- Identifying the realistic starting point(s) in the prior art,
- From each starting point, assessing whether a person skilled in the art would have arrived at the claimed solution.
1 – Defining the Objective Problem
The first step is to determine the objective problem from the perspective of a person skilled in the art, considering their general knowledge at the relevant date of the patent. From this perspective, the aim is to identify what the claim actually contributes to the prior art, not by examining individual features in isolation, but by analysing the claim as a whole, in light of the information provided in the description and drawings, and by considering the underlying inventive concept of the invention.
Thus, unlike the ‘problem-solution’ approach of the European Patent Office (EPO), which focuses on determining the objective problem based on the technical effect associated with the distinctive features of the claim under consideration, the UPC's approach is based on assessing the invention as a whole to identify its real contribution to the prior art. By considering the invention as a whole, the UPC therefore establishes the foundations for a global and pragmatic approach to assessing inventive step.
However, both the UPC and EPO agree on the fundamental principle that the objective problem must not introduce any ‘pointers’ to the claimed solution, to preclude any ex post facto assessment.
2 – Identification of realistic starting points
The second step is to identify one or more realistic starting points in the prior art of the relevant technological field, i.e., the technological field relevant to solve the objective problem, or any other related field in which a similar problem arises, and of which a person skilled in the art would reasonably be aware.
From these prior art sources, documents representing realistic starting points should be selected, i.e., those that would have been of genuine interest to a person skilled in the art seeking to solve the objective problem, typically because they reveal similar characteristics or address the same underlying problem.
The Court of Appeal emphasises that there may be several realistic starting points and that the claimed solution must be assessed as inventive based on each of them.
This second step illustrates the global and pragmatic logic of the UPC’s analysis, recognising that a person skilled in the art could reasonably draw upon different relevant prior art to solve the same technical problem. This flexibility contrasts with the EPO’s traditional approach, which relies on a methodology structured around a single 'closest’ prior art document.
3 – Assessment of inventive step
The third step involves assessing the inventive step of the claimed solution by considering it to be obvious when, at the relevant date, a person skilled in the art, starting from a realistic starting point in the prior art and seeking to solve the objective problem, would have arrived at (and not merely: could have arrived at) that solution.
The Court of Appeal emphasises that a person skilled in the art possesses neither particular inventive skills nor creative imagination, and that it requires a motivation or a 'pointer' which, starting from a realistic starting point, guides them to the next step leading to the claimed solution. Therefore, the criterion of obviousness rests on the prospective behaviour of the person skilled in the art, and not on what they could have done with the benefit of hindsight regarding the elements of the invention.
The Court adds that the claimed solution is also obvious if a person skilled in the art would have undertaken this 'next step' with a reasonable expectation of finding a foreseen solution to their technical problem. This can typically be the case when the results of this step are clearly foreseeable or are the subject of a reasonable expectation of success based on a scientific assessment of the facts known before the development project was undertaken. In this context, the burden of proof that the results were clearly foreseeable or that success could reasonably be expected rests on the party arguing the absence of inventive step.
The Court further acknowledges that inventiveness can emerge not only from a measurable technical improvement, but also from a non-obvious alternative to known solutions.
Conclusion and perspectives
The UPC’s approach thus emphasises a more comprehensive view of the invention, the prior art, and its relevant lessons, while still requiring that the invention be inventive from all the realistic starting points identified. Being a recent development, this approach still contains areas of uncertainty: the concept of a 'realistic starting point' and the definition of a 'next step' or a 'pointer' remain largely contextual and dependent on judicial interpretation, which can lead to variations in assessment between panels of judges and a certain risk of inconsistency.
The question of what constitutes a 'reasonable expectation of success' is also subject to interpretation. These notions are expected to be clarified in future decisions.
Furthermore, the coexistence of the UPC and EPO approaches in the same geographical area can exacerbate this legal uncertainty. Although these approaches can, in many cases, lead to similar results, divergences remain possible. This duality of legal standards can create additional complexity for practitioners and third parties, who must anticipate and navigate between two frameworks for analysing inventive step.
To ensure the strategic protection of your innovations before the UPC or EPO, speak to your Novagraaf attorney or contact our team.
Close
