Written by: Caleb Gilliam-Scott
The Court of Appeal of the Unified Patent Court (UPC) has settled on a distinct and unified approach to assessing inventive step, drawing from established European Patent Office (EPO) practice and national traditions.
Recent decisions [1], [2] confirm that the UPC will treat inventive step as a legal conclusion reached through structured factual assessment, with particular emphasis on avoiding hindsight and on whether the skilled person would have pursued the claimed solution with a reasonable expectation of success.
The Court of Appeal expressly recognizes that states party to the European patent Convention have different traditions for analysing inventive step, (including the EPO’s problem-solution approach and more “holistic” approaches used in some jurisdictions) but views them as methodological “guidelines” that should all converge if properly applied.
At its core, the UPC’s analysis focuses on:
- Defining the objective problem based on what the invention adds over the prior art
- Selecting a realistic starting point from the prior art
- Asking whether the skilled person would (not merely could) have reached the claimed solution at the relevant date, guided by pointers/motivation and reasonable predictability/expectation of success.
Step 1: Identify the object of the invention
The UPC first determines the “object of the invention”, i.e., the objective problem, assessed at the priority date from the perspective of the skilled person and their common general knowledge.
Importantly, the UPC says this is done by comparing the claim as a whole against the state of the art, in the context of the description and drawings, and taking into account the technical teaching and technical effects the skilled person would understand are achieved from reading the application. The isolation of individual claim features is explicitly rejected by the Court of Appeal as a suitable approach.
Furthermore, the objective problem should not include pointers to the claimed solution, because these would inject hindsight into the analysis.
Step 2: Select a realistic starting point (and there may be more than one)
A prior art starting point is “realistic” if its teaching would have been of interest to the skilled person seeking to solve the objective problem at the relevant date.
The UPC emphasizes that there can be more than one realistic starting point, and that the invention must be inventive starting from each realistic starting point.
This is a notable feature of the UPC approach: inventive step is not “saved” simply because one starting point leads to non-obviousness if another realistic starting point would have rendered the claim obvious.
Step 3: Would the skilled person have arrived at the claimed solution (not merely could) following a pointer or routine steps?
As will be familiar to many practitioners, the UPC assumes the person skilled in the art has no inventive skills and no imagination and therefore needs a pointer or motivation directing them to take the next step toward the invention.
A claimed solution is obvious if, at the effective date, the skilled person starting from a realistic starting point and wishing to solve the objective problem would (and not only “could”) have arrived at the claimed solution.
The Court of Appeal repeatedly stresses the “would, not only could” standard. This is not a purely capability-based test; it is about the skilled person’s motivated path, given what they would realistically do to solve the problem. As a general rule, the solution is not inventive if the skilled person would take the next step prompted by such a pointer, or as a matter of routine, and thereby arrive at the invention.
This makes the UPC’s approach particularly attentive to whether the prior art genuinely drives the skilled person towards the claimed route, rather than merely making it theoretically available.
The UPC explains that obviousness is generally present where results are clearly predictable, or there is a reasonable expectation of success.
The Court of Appeal defines “reasonable expectation of success” in rational, project-oriented terms: the skilled person must be able to predict, based on scientific appraisal of known facts, the successful conclusion of the project within acceptable time limits.
This aspect is especially important in uncertain or developing technical fields: the more unexplored the field, the lower the expectation of success.
The Court of Appeal also notes that for an inventive step to be present, it is not necessary to show an improvement of the technical teaching as defined by the patent claims over the prior art: an inventive step may be present for alternative solutions not known from the prior art.
Final Thoughts
These decisions from the UPC’s highest authority bring welcome clarity as to how inventive step will be handled in proceedings before the Court.
One key takeaway from these decisions is that the UPC’s structured inquiry makes it essential to anchor inventive step in technical effects that are already credibly disclosed in the application as filed. Because the objective problem is derived from what the invention adds over the prior art – and is assessed through the eyes of the skilled person at the relevant date – applicants should ensure that the application, when first filed, clearly identifies the technical effects achieved across the scope of the claims and explains why those effects follow from the disclosed technical teaching. Otherwise, later attempts to rely on effects not properly supported at filing risk being discounted, weakening both the formulation of the objective problem and the case for a reasonable expectation of success in favour of inventiveness.
