The Central Division in Paris – inadmissible intermediate generalization (yes), application of problem-solution-approach (no)

In a recent decision issued by the Central Division of the Unified Patent Court in Paris, the European patent (EP 3 646 825) was partially revoked. 
 

Overview of the Case

The case centers around a European patent (EP 3 646 825), focusing on a prosthetic heart valve system. Meril Italy initiated a revocation action, claiming the patent should be invalidated for multiple reasons, including extension of the subject matter, lack of novelty and lack of inventive step. 

Procedural Aspects of the Decision

A significant procedural step was the consolidation of separate revocation (counter) actions brought forth not only by Meril Italy but also by related entities before the Local Division Munich (which referred the counter claims to the Central Division). This consolidation aimed to streamline proceedings and reduce the risk of inconsistent decisions across divisions, enhancing procedural efficiency and judicial coherence.

Substantial Aspects of the Decision

The Paris division identified an "inadmissible intermediate generalization" in the patent claim, aligning closely with a parallel decision by the European Patent Office (EPO). This suggests further that the UPC's standards and reasoning are closely aligned with those of the EPO.

Intriguingly, the Unified Patent Court chose not to use the "problem-solution approach" typically employed by the EPO in evaluating patent validity. Nonetheless, the court mentioned in a side note that even if the problem-solution approach had been applied, it would not have altered the outcome of the decision.

Key takeaways

• Inadmissible Intermediate Generalization: The approach used to identify an inadmissible intermediate generalization seems to closely mirror the methodology of the European Patent Office (EPO). It would be interesting to see if the German Supreme Court, usually even avoiding the term "intermediate generalization”, might have reached a different conclusion.
• Avoidance of the Problem-Solution Approach: The UPC's decision not to apply the problem-solution approach, commonly used in assessing inventive step, illustrates its willingness to employ different methodologies and to deviate from EPO practice. This indicates a flexible approach to legal reasoning, tailored to the specifics of each case.