Category: General

When we write and prosecute a patent application, two factors will greatly influence the outcome: (A) how well we wrote the application (including how correct our understanding of the prior art was), and (B) what we did during prosecution or opposition with the material available to us in the application text (especially in terms of claim amendments and arguments).

As the green curve in the figure below illustrates, even optimal argumentation during prosecution may not yield good value if the application was poorly written (good claim amendments may, for example, be impossible). On the other hand, insufficient arguments (the red curve) will yield significantly worse results than good ones, particularly in the middle of the quality scale.

Recent decisions from the Unified Patent Court, and particularly the Court’s reliance on could-would reasoning, are setting new standards for patent application drafting in Europe. I will here use a recent decision from the EPO Board’s of Appeal to illustrate the value of a high-quality application text in practice.

T 0776 / 24

The claim at issue (auxiliary request 00) in Decision T 0776/24 covered a mass damper formed by twin sheet elements with a zig‑zag geometry, in combination with a guiding arrangement that constrained deformation during a vehicle impact.

The opponent argued that there was no synergy in this combination: (1) the guiding features were associated with stability while (2) the particular sheet geometry could be portrayed as nothing more than an alternative shape for a known damper element. The opponent therefore tried to split the inventive‑step analysis into partial problems that were easier to dispose of using different pieces of prior art.

What prevented that line of reasoning from succeeding was the way the application text explained what the zig-zag geometry was meant to achieve. The description did not merely mention zig‑zag sheet elements; it explained that this configuration ensured smooth compression, led to more uniform deceleration during a collision, and thereby contributed to minimising damage to the vehicle. The advantage of the claimed sheet geometry lay in how the structure deformed under crash loading, how energy was absorbed over time, and how the deformation path influenced deceleration behaviour. This is a fairly complex, dynamic effect.

In EPO proceedings, the applicant is allowed to explain the technical effect of any distinguishing feature (or combination of features, such as the guiding features + the sheet geometry). But this “explain later” strategy works best if the effect is clear and indisputable. The EPO can be more cautious about allowing a complex effect to be attributed to a feature if it is not explicitly disclosed or immediately derivable from a discussion given in the text. The Unified Patent Court’s assessment of inventive step also relies heavily on what the application text teaches.

In T 0776 / 24, once the effect stated in the application text was accepted by the EPO Board of Appeal as real and relevant, the opponent’s attempt to characterise the zig‑zag geometry as a mere alternative design lost its force. The guide was not solving a separate, unrelated stability problem (1); it enabled the damper geometry to deliver the effect that the patent set out to achieve. The Board made it clear that partial-problem splitting is inappropriate where the features interact and jointly contribute to a common technical aim.

The explicit presentation of the technical effect in the patent text was a decisive factor behind this reasoning. Without it, the patent proprietor would have had far less basis to resist the opponents “obvious alternative” argument (2).

Practical implications for drafting:

1. We may not want to present the technical benefits of every claimed feature in our application text. It may be unnecessary to do so since we are allowed (at the EPO) to explain technical effects during prosecution or opposition.
2. However, if the technical effect is complex, relying on the assumption that it can be discussed when the need arises (without writing it into the application text) is riskier.  Explicitly explaining what happens and why it matters in the application text can be the difference between a feature being treated as a meaningful technical contribution (which, we hope, is inventive) or as a mere alternative design (which is less likely to be considered inventive).
3. T 0776/24 shows that the explanation of a technical effect need not be elaborate. There was no requirement for experimental data, simulations or quantitative proof. A clear statement linking structure, behaviour and technical benefit was sufficient.

In this sense, T 0776/24 is a reminder that the best foundations for good arguments are often laid long before prosecution, opposition or appeal proceedings begin. When writing new applications, attorneys should make sure they understand the invention in full, claim the necessary features of the invention and explain complex aspects not only from a structural (“what a device contains”) perspective, but also a functional (“what happens”) perspective.

While conducting a routine experiment, a researcher noticed an unexpected result that did not align with the original objective. Out of curiosity, they investigated the phenomenon further and discovered a new, useful property. This accidental observation became the foundation of a new invention.

“Now I’ll patent this and become a millionaire!” they thought excitedly.

In research-driven organizations, there is often a persistent belief that strong science naturally leads to strong intellectual property (IP) rights. Discovering a new material, a promising formulation, an elegant synthesis route, or an unexpected technical effect can feel like the most difficult part of the invention process. Once the experimental results have been collected and analyzed, patenting the invention may appear to be a straightforward process: document the invention, draft a patent application, and obtain a strong patent. In practice, however, the relationship between cutting-edge research and commercially valuable IP is far less direct.

This is because scientific research and patents are designed for different purposes. The goal of scientific research is to generate reliable new knowledge, answer questions, and create understanding about phenomena in the universe. Patents, by contrast, are tools for protecting new technical inventions by granting the patent holder a time-limited right to exclude others from commercially exploiting the invention in exchange for public disclosure of the invention. This fundamental distinction is particularly evident in the fields of engineering and natural sciences, where the first published result may be scientifically impressive yet commercially narrow and difficult to exploit in the market.

As a result, some universities and research organizations maintain patent portfolios that appear stronger on paper than they are in practice. A filed patent application or a granted patent may create the impression of technological maturity, but for a potential licensee, investor, or partner, the critical question is whether the IP genuinely supports a business decision. Is the invention described broadly enough? Is the technical advantage clear and credible? Can the patent support commercial collaboration, investment, product development, or a future exit scenario? If the answers are uncertain, the mere existence of IP may not reduce risk in the expected way, it may simply postpone these issues until later.

What turns research into strong IP?

If excellent scientific research does not automatically produce excellent IP, how can strong IP be created?

The answer usually lies in how the invention is developed from the very beginning. Strong patents rarely arise from scientific novelty alone. They are typically shaped by broader factors: collaboration with industry, active participation by inventors, effective organizational support, and a realistic understanding of where and how the invention could create value in the market.

This interpretation of the invention is often where the real work begins. Academic research emphasizes precision, novelty, and publishability within a limited experimental framework. Companies, on the other hand, focus on whether the invention can be expanded, reproduced, strategically protected, and commercially differentiated from alternative solutions. Can the invention extend beyond the initial experiment? Is the advantage tied to something reproducible? Does the patent retain strategic value beyond the original research? Are there realistic alternatives, fallback positions, or nearby implementations with commercial relevance?

Research-driven environments often lack a proper understanding of patent strategy because too much attention is placed solely on whether the invention is sufficiently novel to justify filing a patent application. This perspective overlooks how disclosure of the invention affects later use and commercialization. A more important question is whether the invention has been described and documented in a way that supports future use cases and enables broader applications.

In practice, this may mean identifying the true invention behind the first successful experimental result. Sometimes the value of a patent lies in covering a broader concept, such as a formulation, a structural or material relationship, or a manufacturing process, rather than a single isolated result. This makes the patent more flexible and expands its potential applications. It is also important to understand that the real value of a patent is determined by how effectively it supports licensing negotiations, startup financing, and collaboration agreements. The best patents do not emerge merely from legal drafting; they are built on careful technical judgment and a clear understanding of how value and utility are created after the application is filed. In this way, a patent can function as a genuinely strategic tool that supports commercialization and reduces future uncertainty.

What does this mean for companies, startups, and research organizations?

Companies should evaluate scientific inventions more carefully than simply by looking at the scope of patent protection. What matters is understanding the substance of the patent, the practical applicability of the invention, the required further development, and the technical rationale necessary for implementation. Patents should therefore be viewed as part of the innovation and commercialization process, not merely as achievements on paper.

For startups, the implications are significant. Founders coming from academic backgrounds often assume that owning or licensing a patent is enough to convince investors or create strategic advantage. Sometimes this is true, but more often the key issue is whether the patent supports a credible story about market position, defensibility, and future development opportunities. Investors and partners usually look far beyond the filing date or the wording of the claims. They value consistency, scalability, and realistic value creation. They want to understand whether the IP portfolio as a whole is coherent, scalable, and aligned with a credible path to commercial value. A strong IP portfolio reduces uncertainty, clarifies ownership, and supports negotiations and growth.

For universities and research organizations, this message may be the most important of all. The goal should not merely be increasing the number of patents but improving the quality and usability of IP generated from research. Patents are part of a broader impact strategy that includes collaboration, inventor engagement, and commercial readiness. Excellent research needs an IP strategy that supports the transfer of innovation from the laboratory to the market, allowing patents to become genuine strategic assets.

Practical ways to improve IP quality

1. Identify the real invention early
   Many patents remain too narrow because they are based directly on the first experiment or publication. From a quality perspective, the essential question is: what is truly new and inventive here? Instead of a single compound, for example, the real invention may involve a broader formulation or a process for producing compounds. This often requires technical discussion between the inventor and the patent professional before drafting the application.
   
2. Connect patenting to a real use case
   Good IP is not only technically novel and inventive; it is also linked to a credible use scenario. In universities, this means considering potential users already during the filing stage. In startups, it means aligning patents with the chosen market and development direction rather than seeking only “general protection.”
   
3. Invest in active inventor participation
   High-quality patents rarely emerge without genuine inventor involvement. A properly completed invention disclosure form alone is not enough. In the best cases, inventors participate in defining the claims, identifying alternative embodiments, and articulating the technical advantages. This improves both the logic of the protection scope and the patent’s future defensibility.
   
4. Build patents for future use, not just for grant
   Many weak patents are difficult to commercialize. It is worth evaluating whether the patent supports licensing, financing, partnerships, or freedom to operate. If the answer is unclear, the patent structure may need adjustment; for example, alternative claim categories and commercially meaningful dependent claims can be decisive.
   
5. For universities: quality before quantity
   The number of patents alone is not a good metric. A better approach is to focus on inventions with genuine commercial potential, collaborate with industry, and patent strategically at the right time.
   
6. For startups: make IP part of the story, not a standalone shield
   Investors are rarely interested in a patent alone. They care about how the IP supports competitive advantage, scalability, and future opportunities. High-quality IP is reflected in a patent portfolio that supports a clear strategic narrative: why this team, this technology, and this market.

Conclusion

The quality of IP originating from scientific research improves when patenting is viewed as part of innovation development and commercialization from the very beginning. This shift in mindset is often more important than individual legal decisions.

References and further reading

• European Patent Office – The role of European universities in patenting and innovation
• WIPO – Harnessing Public Research for Innovation in the 21st Century

Could-would arguments are not indispensable at the EPO

In inventive step analysis at the EPO, could-would arguments focus on “pointers” in the closest prior art document D1. Pointers are typically text passages where a topic relevant to the objective technical problem has been discussed.

When arguing against inventive step over D1, a could-would argument can state that D1 contains a hint (the pointer) which would have led the skilled person to the claimed solution. If we want to argue in favor of inventive step, we turn the other way: the pointer in D1 leads the skilled person to doubt that the claimed solution could work, therefore the claim must be inventive over D1. The could-would approach is applied in the same way at the UPC.

However, in practice, many prior art documents don’t contain any information pertinent to the objective technical problem. They don’t explicitly point the person skilled in the art in any direction. This is not particularly significant in EPO oppositions, since lack of inventive step can be argued by other means when no pointers are available. We look for prior art which meets a few general proximity criteria and (assuming that it’s not a novelty objection) leads to an easily solvable objective technical problem. A could-would argument is a welcome addition if it can be made, but it is not indispensable.

Recent case law illustrates the importance of could-would arguments at the UPC

The UPC Court of Appeal’s emphasis on could-would reasoning is an interesting aspect of its inventive step analysis, where the EPO’s problem-solution approach is not utilized.

In a recent order concerning a request for provisional measures, UPC-CoA_901/2025 (Abbott v Sinocare), the UPC Court of Appeal discussed a continuous glucose monitoring system. The order offers an interesting illustration of how central could-would reasoning is when inventive step is assessed at the Court.

This leads to the question: Does the absence of a pointer in a prior art document more or less automatically mean that the claim is inventive over that document?

If the answer would be yes, then the optimal prior art in UPC proceedings may differ from the prior art we would prefer to use before the EPO.

Abbott v Sinocare

The Court of Appeal begins its inventive step analysis by restating the now familiar framework: the claim as a whole is compared with the prior art in the context of the description and drawings to formulate an objective problem. Obviousness hinges on whether the skilled person, starting from a realistic starting point and wishing to solve that objective problem, would have arrived at the claimed solution (paragraphs 91-92).

The attacking party carries a positive burden to articulate a coherent line of reasoning: why the chosen starting point is realistic, what the differences are, what problem is addressed, and crucially why the skilled person would be motivated to modify the starting point in the claimed direction. The Court’s treatment of the main starting point, Saffer, demonstrates what is required.

The Court accepts that Saffer is a realistic starting point because it addresses a similar technical field and problem (paragraphs 96–99). The Court then carefully identifies the features that are missing from Saffer (paragraphs 105–110). From that point on, the analysis is driven by the absence of a pointer (paragraphs 115-118). The Respondents attempt to derive a pointer from Saffer’s statement that “other information regarding the graph” may be displayed on the glucose overview screen, and from references to lines indicating when insulin should be administered. The Court rejects this argument.

The absence of a pointer also becomes decisive when the Court considers the proposed combinations with secondary documents such as Stocker, Matian, and Schwartz. In each case (paragraphs 128, 138 and 145), the Court stresses that these documents lack pointers. Against that background, the Court concludes that combining Saffer with these documents would require the skilled person to isolate selected elements from systems with different aims and architectures and transplant them into Saffer’s glucose overview screen without any teaching or motivation to do so.

This reflects how the UPC’s inventive step framework functions in practice. Because the test turns on whether the skilled person would take a particular step, and because that assessment hinges on concrete motivations and technical context, an obviousness attack must articulate a credible narrative of why the skilled person would move from the starting point to the claimed invention.

Conclusions

For parties opposing patents at the UPC, there are three main takeaways:

(1) Due to the way the UPC assesses inventive step, prior art documents which don’t touch on the same problem as the target patent may have little value despite technical proximity. Even a good starting point (such as Saffer) may be insufficient if it lacks a clear pointer to how the objective problem might be solved. Potential prior art should therefore be carefully reviewed not just for how it matches the features claimed in the target patent, but also for its general teaching.

(2) Both at the EPO and the UPC, a prior art document needs to provide a realistic starting point for the person skilled in the art. Beyond that, EPO-optimal prior art may be in need of supplementation before the UPC. If D1 seems like excellent prior art from an EPO perspective but lacks a pointer, we might want to search for a pointer-containing D2 to be able to formulate a D1+D2 objection at the UPC.

(3) Breadth of prior art is no substitute for depth of reasoning. Without a properly articulated “would” chain, even a large collection of prior art may fail to undermine inventive step at the UPC.

Footnote

A noteworthy additional aspect of this Abbott v Sinocare decision concerns the treatment of allegedly non technical features. The Respondents argued that the measures of feature group 1.13 should be excluded from inventive step analysis as non technical user interface features (paragraph 111). The Court rejects this and explicitly draws on the EPO’s COMVIK style reasoning, stating that a feature should not be excluded merely because it is non technical as such (paragraphs 113–114).