First Impressions of Inventive Step at the Unified Patent Court

An invention can be patented if no earlier publication presents the same idea. It should not be just an obvious alternative to similar solutions known from the prior art. This inventive step requirement is often debated with the patent office when a patent application is examined, and the debate may continue in opposition and court proceedings where the validity of a granted patent is put to a final test. What is the difference between the claimed invention and the prior art, and is the difference significant or not?

If all features of claim 1 can be found in a publication D1, then claim 1 is not novel and inventive step is not even discussed. But if at least one technical feature F1 specified in claim 1 is not present in D1, we must proceed to consider if feature F1 amounts to an inventive step over D1.

Patent offices and courts across the world assess inventive step in different ways. The goal is to reach an unambiguous, objectively correct conclusion. Everyone’s patents should ideally be treated in the same way. But this can be difficult because the inventive step question is often very complex. Each invention and each prior art document have their own peculiarities.

The problem-solution approach for assessing inventive step has gained broad popularity in Europe. It contains the following three steps PSA1 – PSA3.

• PSA1: Determine the technical effect of F1 over D1. That is, what does the claimed solution achieve, compared to the one known from D1?

• PSA2: Based on the technical effect, formulate the objective technical problem. If the technical effect has been formulated correctly, the objective technical problem can typically be phrased as “how can the technical effect be achieved”?

• PSA3: Evaluate if the person skilled in the art would have solved the objective technical problem with feature F1 without inventive skill (on the day when the patent application containing claim 1 was filed).

I have presented strategies relating to the problem-solution approach in my recent book Problem-Solution Arguments at the European Patent Office – an attorney perspective (Boco IP, 2025). https://www.bocoip.com/en/books/

Neither the European Patent Convention nor national European patent laws stipulate that the problem-solution approach is mandatory for assessing inventive step. There are also other approaches and the case law of each patent office and court indicates which approach the institution prefers.

As a new, almost pan-European patent jurisdiction, the Unified Patent Court is of great interest right now. If your company has commercial activities in Austria, Belgium, Bulgaria, Denmark, Estonia, Finland, France, Germany, Italy, Latvia, Lithuania, Luxembourg, Malta, the Netherlands, Portugal, Romania, Slovenia or Sweden, you may find yourself accused of patent infringement at the UPC. How does this court assess inventive step? Just recently, we have begun to receive some answers.

Three decisions from the UPC Court of Appeal

Inventive step has been assessed repeatedly at the lower levels of the Unified Patent Court since its inception in 2023, sometimes using the problem-solution approach, sometimes in other ways. But the Court of Appeal in Luxembourg did not get its say on the matter until the fall 2025.

In its recent decisions the Court of Appeal has established that inventive step is not assessed with the problem-solution approach at the UPC. Instead, the Court adopts an approach which has, for lack of a better word, been called “holistic”.

The recent decisions of the Court of Appeal are of interest to legal practitioners who argue before the court and to all patent professionals who write application texts which may, someday, come before the court. It is therefore worthwhile to understand how the holistic approach works.

I will focus on three decisions:

UPC_CoA_27/2025 (Meril v Edwards),
https://www.unifiedpatentcourt.org/en/node/159797

UPC_CoA_71/2025 (VMR v NJOY),
https://www.unifiedpatentcourt.org/en/node/160069

and UPC_CoA_528/2024 (Amgen v Sanofi),
https://www.unifiedpatentcourt.org/en/node/159788

In Meril v Edwards (where the main request and auxiliary request 1 contained added matter) the Court concluded after a thorough analysis that claim 1 of auxiliary request 2 was inventive over the prior art. In VMR v NJOY, the conclusion was that claim 1 of the main request lacked an inventive step. In Amgen v Sanofi, which concerned a biotechnology invention, claim 1 was inventive over the prior art. Let’s review how inventive step was assessed in these cases.

Comparison between the problem-solution approach and the holistic approach

Referring to the earlier decision Nanostring v 10X Genomics, all three decisions outline the steps of the holistic approach as follows (I have underlined the most important parts):

HOL1: Establish the objective of the invention, i.e. the objective problem by establishing what the invention adds to the state of the art and comparing the claim as a whole to the prior art, in the context of the specification and the drawings. The person skilled in the art should on the basis of the application understand the technical effect which underlies this objective problem. The problem should not contain a pointer to the solution.

HOL2: The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation to solve the objective problem. A claimed solution is not inventive when the person skilled in the art would take the next step, prompted by the pointer.

In addition to HOL1 and HOL2, Amgen v Sanofi adds a third step HOL3 which, I believe, is generally applicable but perhaps of special interest in biotechnology.

HOL3: The claimed solution is obvious if the skilled person would have taken the next step in expectation of finding an envisaged solution of his technical problem. This is generally the case when the results of the next step were clearly predictable, or where the was a reasonable expectation of success.

The criterion HOL1 covers approximately the same ground as PSA1 and PSA2 since it deals with the formulation of a problem that the person skilled in the art sets out to solve. HOL2 and HOL3 are related to PSA3 because they ask if the claimed solution to said problem would have been obvious.

For most intents and purposes, I believe we can say that HOL2 + HOL3 = PSA3. But HOL1 does not seem equivalent to PSA1 + PSA 2. I will analyze this in more detail and then give some guidance on how new application texts should be written to facilitate good inventive step arguments in both approaches.

HOL2+HOL3=PSA3

Step HOL2 is a narrower version of step PSA3. The could-would approach mentioned in HOL2 is one way to perform step PSA3, but not the only way. In fact, as I explain in my book, the pointers mentioned in HOL2 are rare. Most of the time the closest prior art document D1 will lead the person skilled in the art neither toward the claimed solution nor away from it.

HOL2 emphasizes that the claimed solution is not inventive if the person skilled in the art can reach that solution by following a pointer in D1. This is obviously true also in the problem-solution approach. The second requirement in HOL3 then broadens the range of arguments by stating that a “reasonable expectation of success” can also be sufficient to judge the claimed solution obvious, even in the absence of a pointer.

In PSA3 we can often argue that the person skilled in the art would solve the objective technical problem with feature F1 (even in the absence of a pointer) if the required modification to D1 is straightforward and simple. On the other hand, if we want to argue that the claim is inventive, we need to show that the modification would require redesigning the device in D1. The more complicated the redesign task, the better.

It remains to be seen how, and in which fields of technology, the UPC will use the additional criterion HOL3. But for now, I conclude that the final steps of the UPC’s holistic approach seem similar to the corresponding steps in the problem-solution approach.

HOL1 ≠ PSA1 + PSA2

In contrast, the first step of the holistic approach does not correspond at all to the first two steps of the problem-solution approach. This may be surprising because the “objective problem” mentioned in HOL1 sounds like a term equivalent  the “objective technical problem” determined in PSA2. But they are different.

In steps PSA1 – PSA2 of the problem-solution approach, the technical effect of F1 can typically be formulated with quite a lot of freedom. We are not bound to what the application text states. Sometimes the application text is helpful, of course. But it is at least possible to refer to technical effects and problems which the text does not mention. The reason why the EPO allows the parties so much freedom is that, in steps PSA1 – PSA2, we take a deliberate step back from the solution to avoid hindsight. This is what makes the objective technical problem “objective” (see my book for more detailed explanations).

In contrast, HOL1 refers to what the invention adds to the prior art and emphasizes that the person skilled in the art should understand the technical effect on the basis of the application. When we read the recent decisions from the Court of Appeal, we see that these are not empty words. What has been written in the application text seems to be the clear starting point for the assessment of inventive step.

In Meril v Edwards, where the claim was found to be inventive, the objective problem is discussed in paragraphs 137-144 of the decision. The assessment focuses on whether or not Meril (who argues against inventive step) could show that the effect described in the patent does not occur. Since Meril could not do so, and since none of the publications which formed a realistic starting point contained an incentive to the solve the objective problem in the claimed manner, the Court of Appeal considered the claim inventive.

This does not mean that the claim was ignored. Meril v Edwards contains a long discussion on claim interpretation (paragraphs 50-75). But the discussion focuses on how the claim should be interpreted in light of the description, and how that interpretation differs from the prior art. This is presumably what makes the method “holistic”. Instead of picking out a single feature and building the whole analysis on top of it, the UPC court wants to understand how the claim “as a whole”, in the broadest possible sense, differs from the prior art.

The discussion in Meril v Edwards is a bit confusing because it never explicitly formulates the objective problem (although based on paragraph 173 the problem seems to be “how to achieve the technical effect discussed in paragraphs 141”). In any case, Edwards seems to hit the nail on the head by claiming the hexagonal feature and then explaining the benefit of that feature in the application text. This secured victory.

In VMR v NJOY the hammer missed the nail. Paragraph 79 states that “the patent specification does not explain disadvantages pertaining to vaporizers in the prior art, advantages with the invention, or even how the invention distinguishes itself from prior art”. VMR Products attempted to formulate the problem in paragraph 78 based on a synergy argument, but this was rejected in paragraphs 81-82 because the Court of Appeal could not find any statement in the application text which would have indicated synergy. The objective problem was therefore just “to provide an alternative”. As is often the case when this is the problem, the claimed solution was then considered obvious based on common general knowledge.

Implications for application drafting

The case law will be developed further in coming decisions, but for now I draw the following conclusions from the three decisions I have discussed here:

1. The UPC’s method for formulating the “objective problem” is completely different from how the “objective technical problem” is formulated in the problem-solution approach.
2. The holistic approach seems to assume that the applicant had a correct view of the prior art when the application was written, and uses the application text to formulate the objective problem. The problem solution approach does not.
3. The UPC’s “no-pointer-to-the-solution” maxim seems to be just an informal check which is applied after a prospective objective problem has been formulated. In contrast, steps PSA1 + PSA2 in the problem-solution approach are procedural steps for avoiding hindsight.
4. The procedure which leads to the formulation of the objective problem seems to involve more freestyling at the UPC than at the EPO, but there is less freestyling at the UPC than the EPO when it’s time to show why the person skilled in the art would (or would not) solve that problem without inventive skill.
5. These differences may be insignificant in chemistry and biotechnology where the problem-solution approach has never been particularly useful. It is likely to be significant in all other fields of technology.
6. A patent is more likely to withstand inventive step objections at the UPC if:
   • a) the closest prior art had been accurately identified before the application was written,
   • b) the invention was claimed with that prior art in mind, and
   • c) the application text makes it sufficiently clear (for the person skilled in the art) what the main benefits of the invention are, and preferably also the benefits of the main fallback position.
7. If a patent text doesn’t live up to requirements 6a – 6c, the inventive step of its claims may be challenged at the UPC with weaker prior art than at the EPO.

The value of a well-written and coherent application text, which clearly states how features and embodiments are linked to each other, what the purpose of the invention is and what the different embodiments achieve, will be greater than ever.

But even though the application text seems to make a bigger difference in the UPC’s holistic approach than in the EPO’s problem-solution approach, there’s no reason to think that all attempts to argue beyond the bounds of the text would be doomed to failure. What teaching the skilled person does or does not obtain from the text can and will be debated.

Many commentators have repeated the wish expressed in Meril v Edwards paragraph 129: “Despite the difference in approach (holistic vs. problem-solution vs others), all of these are merely guidelines to assist in the establishment of inventive step, that, when properly applied, should and generally do lead to the same conclusion”. I don’t currently share this optimism, but it will certainly be interesting to see how UPC and EPO decisions differ from each other if, in some future case, they evaluate the same claim with respect to the same prior art.

Don’t hesitate to contact Boco IP if you want to discuss how UPC decisions impact your own patenting activities.