Post by Alessandro Cossu

In an article published yesterday by ‘Managing IP’ (link below), I discuss the UPC approach to the assessment of inventive step, the so-called ‘holistic approach, and argue that, despite looking superficially similar to the EPO ‘problem-solution approach’, the holistic approach is nothing but the approach applied by the German Federal Court of Justice (Bundesgerichtshof or BGH) for assessing inventive step. I discuss the alleged rationale for this choice, i.e., a supposedly stronger ‘immunity’ against hindsight, and argue that the adoption of the holistic approach at the UPC is a step back on the way to harmonisation of patent law in Europe and that this approach is methodologically vague and less predictable than the problem-solution approach. I also analyse the recent decision UPC_CoA_901/2025 of the Court of Appeal of the UPC in the case ‘Abbott v Sinocare’, which was hailed as a step towards harmonisation between the UPC approach and the so-called COMVIK approach applied by the Boards of Appeal of the EPO to the assessment of inventive step of inventions involving a mix of technical and non-technical features. In my view, the Court of Appeal misapplied the principles of the COMVIK approach: the reasoning of the court appears to be based on the well-known ‘technical leakage fallacy’ and ‘broken technical chain fallacy’ that have been long identified in the case law of the Boards. I maintain that the adoption of the holistic approach reduces the predictability of the assessment of inventive step at the UPC, particularly in the area of inventions involving a mix of technical and non-technical features, such as computer-implemented inventions, and may lead to a divergence between the case law of the UPC and that of the Boards of Appeal of the EPO. I conclude the article by arguing that the adoption of this approach will disadvantage applicants and practitioners from UPC countries that rely on the established problem-solution approach of the EPO and will further exacerbate the imbalance in the distribution of cases at the UPC. Thank you #Bugnion for your support. Link to the article: https://lnkd.in/djpgfYv8 Bastian Best, Sébastien Ragot, Maximilian Vieweg, Anna Hatt, Martin Wilming, Prof. Dr. Tilman Müller-Stoy, Christopher Stothers, Tjibbe Douma, Christopher Rennie-Smith, Antonio Salerno, Tilman Pfrang, Bernhard Thum