The Central Division in Munich in how to deal with the most relevant issues of any patent (revocation) case

In a slightly older decision of 16 July 2024, the Central Division in Munich delivered a ruling with high practical relevance for anyone participating at the Unified Patent Court (UPC) and the European Patent Office (EPO). It is not so much about introducing entirely new concepts, but rather, it brings together familiar concepts from various other jurisdictions into a “unified” decision by the UPC. This decision, without any exaggeration, is immensely useful on a daily basis when dealing with substantive issues at both the UPC and the EPO. It is highly recommended to read the headnotes of this case — ideally before beginning work on any UPC case involving claim interpretation or the assessment of inventive step. In other words, one should be familiar with these headnotes before tackling any case that implies going into the substantive details of a patent.
 

HEADNOTES

• When interpreting a patent claim, the person skilled in the art does not apply a philological understanding, but determines the technical meaning of the terms used with the aid of the description and the drawings. From the function of the individual features in the context of the patent claim as a whole, it must be deduced which technical function these features actually have individually and as a whole. The patent description may represent a patent´s own lexicon.
   
• A claimed invention is to be considered the “same invention” as meant in Article 87 EPC (priority right) if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole.
   
• The assessment of inventive step starts from a realistic starting point in the prior art. There can be several realistic starting points. It is not necessary to identify the “most promising” starting point. 
   
• In general, a claimed solution is obvious if the skilled person would be motivated to consider the claimed solution and would implement it as a next step in developing the prior art. It may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s). The absence of a reasonable expectation of success (or more in general: non-obviousness) does not follow from the mere fact that other ways of solving the underlying problem are also suggested in the prior art and/or (would) have been pursued by others. The decisive question that has to be answered is whether the claimed solution is non-obvious. 
   
• For assessing inventive step it is not the question whether the skilled person would inevitably arrive at the same result (falling within the scope of the claim or not). Rather, it is sufficient (but also necessary) for denying inventive step that the skilled person would without inventive contribution arrive at a result which is covered by a claim. 6. A technical effect or advantage achieved by the claimed subject matter compared to the prior art may be an indication for inventive step. A feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step.

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