Title: Inventive Step – How will the Unified Patent Court Decide?
Introduction:
When it comes to obtaining patent protection for an invention, one of the key criteria that must be met is the "inventive step." An inventive step refers to the feature of an invention that involves technical progress compared to existing prior art. In Europe, the Unified Patent Court (UPC) plays a crucial role in deciding whether an invention meets the inventive step requirement. In this article, we will delve into how the UPC determines inventive step and what factors are considered in making this important decision.
What is an Inventive Step?
An inventive step, also known as non-obviousness, is a legal requirement in patent law that defines the threshold for an invention to be considered new and inventive. In Europe, an inventive step is defined in Article 56 of the European Patent Convention (EPC) as the presence of an invention that, for a person skilled in the relevant technical field, would not have been obvious at the filing date of the patent application.
How will the UPC Decide on Inventive Step?
The UPC will evaluate whether an invention meets the inventive step requirement based on a combination of legal principles and technical analysis. Some of the key factors that the UPC will consider include:
- Technical Effect: The UPC will assess whether the invention provides a technical effect that goes beyond what is already known in the prior art. This technical effect should demonstrate an improvement in the functioning or efficiency of the invention.
- Non-Obviousness: The UPC will evaluate whether the invention would have been obvious to a person skilled in the relevant technical field at the time of the patent application. If the invention is a mere combination of known elements without any unexpected result, it may not meet the inventive step requirement.
- Problem-Solution Approach: The UPC may also apply the problem-solution approach, which involves identifying the technical problem addressed by the invention, determining the closest prior art, and assessing whether the solution provided by the invention would have been obvious to a skilled person.
- Secondary Considerations: The UPC may take into account secondary considerations, such as commercial success, long-felt but unsolved needs, and industry praise, to support a finding of inventive step.
Benefits and Practical Tips:
- Conduct a thorough prior art search before filing a patent application to identify any existing technologies that could impact the inventive step assessment.
- Clearly articulate the technical problem solved by the invention and highlight any unexpected or advantageous results achieved through the invention.
- Consider seeking professional advice from a patent attorney with experience in European patent law to navigate the complexities of the inventive step requirement.
Conclusion:
Inventive step is a critical aspect of patentability that determines whether an invention is deserving of patent protection. The UPC plays a pivotal role in evaluating whether an invention meets the inventive step requirement by considering factors such as technical effect, non-obviousness, problem-solution approach, and secondary considerations. By understanding how the UPC decides on inventive step and following practical tips for navigating this requirement, inventors can increase their chances of successfully securing patent rights in Europe.