The foundation of inventive step at the UPC

Under Article 56 of the European Patent Convention (EPC), an invention involves an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

The UPC’s foundational framework for assessing obviousness was established by the Court of Appeal in landmark cases, namely, Amgen v Sanofi (UPC_CoA_528/2024/UPC_CoA_529/2024) and Meril v Edwards (UPC_CoA_464/2024). This framework requires:

• Identifying the objective problem from the perspective of the skilled person with its common general knowledge, by determining what the invention adds to the state of the art by reading the claim as a whole, in the context of the description and drawings.
• Establishing that the skilled person starting from a realistic point in the state of the art, wishing to solve the objective problem, would – not merely could – arrive at the claimed solution.

The UPC explicitly states that a claimed solution is not inventive where the prior art contains a pointer or motivation directing the skilled person toward that solution.

The two recent first instance decisions apply these principles directly to claims that involve multiple distinct functionalities.

UPC_CFI_846/2024

In Promosome v BioNTech/Pfizer, the patent at issue sought to protect a method for improving full-length protein expression efficiency. The specific combination added in Auxiliary Request 4 introduced two distinct techniques: the mutation of one or more secondary initiation codons; and the mutation of one or more miRNA binding sites.

The decision firstly discusses the EPO’s “partial problem” approach, which assesses each feature or feature groups for inventive step separately when the features are a mere aggregation instead of functionally interdependent. The decision then notes that regardless of whether the court has to adopt the EPO’s exact methodology, it would apply the UPC’s “whole claim” approach.

Ultimately, the court found no explicit or implicit disclosure in the patent specification showing that these two mutation techniques were functionally connected. While both methods could be used in conjunction with each other to increase protein expression efficiency, this coexistence did not amount to functional interdependence. Because no combined effect was produced beyond the ordinary individual contributions, the claim was deemed a mere aggregation lacking an inventive step.

UPC_CFI_251/2025

The Hague Local Division reinforced this UPC approach in a dispute where the patent proprietor, Maxell, alleged that Samsung infringed its patent relating to content relay systems. Specifically, the technology involved transitioning information content from a portable terminal to an information processing apparatus, such as a digital television.

In evaluating Auxiliary Request 7a, the decision reiterates that inventive step cannot be assessed by looking at individual claim features in isolation. Specifically, the court identified four groups of allegedly distinguishing features, namely, “handback functionality”, “second history information”, “remote control functionality”, and “internet site content”.

The Hague Local Division explicitly set out the principle for assessing aggregations: an inventive step is absent if each individual distinguishing feature is obvious on its own, and they do not interact functionally to produce an effect that goes beyond a mere juxtaposition. The patentee argued that the features jointly contribute to a smoother and more user-friendly provision of content relay experience. However, the court remained unconvinced, finding that the combination merely provides standard functionalities without any functional interdependencies that establish a synergistic effect.

Key takeaways for patent practice

These decisions highlight a critical reality of UPC litigation: simply combining independently obvious features into a single claim will not defend it from an inventive step challenge. The UPC expects to see functional interdependence that leads to a combined technical effect beyond mere juxtaposition. Crucially, the court in UPC_CFI_846/2024 looked directly to the patent for evidence of this combined effect and found nothing.

For practitioners, this provides useful guidance on strategic patent drafting.

The specification should explicitly describe the technical interactions and combined technical effects between features.

These descriptions of functional interdependence should not be limited to features initially recited in the independent claims, but should also extend to features that may later be combined into the independent claims as fallback positions.

Case details at a glance

Jurisdiction: UPC
Decision level: Munich Local Division
Parties: Promosome LLC v BioNTech SE and Pfizer Inc
Date: 07 July 2026
Citation: UPC_CFI_846/2024, UPC_CFI_485/2025 & UPC_CFI_535/2025
Decision (PDF): https://dycip.com/upc-cfi-846  

Jurisdiction: UPC
Decision level: The Hague Local Division
Parties: Maxell Ltd v Samsung Electronics Co Ltd
Date: 10 December 2025
Citation: UPC_CFI_251/2025 & UPC_CFI_769/2025
Decision (PDF): https://dycip.com/upc-cfi-251-2025