The UPC's Interpretation Of Inventive Step: Does It Follow The Problem-solution Approach?

NJOY Netherlands B.V. v. VMR Products LLC (UPC_CFI_311/2023, ORD_598528/2023), Paris Central Division—January 21, 2025

Dutch e-cigarette manufacturer NJOY attacked a patent held by its competitor VMR Products, a subsidiary of Juul Labs. The challenged patent (EP 3 626 092, "EP'092") related to an electronic cigarette, which provides nicotine via a smokeless inhalation process. E-cigarettes typically consist of two parts, a battery and a cartomizer. The latter is a combination of a container holding nicotine liquid and a heating element for vaporization of such liquid. EP'092's inventive concept is essentially the inclusion of a small window in the cartomizer showing the amount of liquid left in the device. The patent was granted on July 5, 2023.

NJOY filed a revocation action on January 21, 2025 arguing a lack of inventive step with regard to the window.

The UPC's Paris Central Division (CD) maintained EP'092, ruling that the vaporization system did not lack inventive step.

The court outlined its test for inventive step that followed previous UPC decisions. It first determined whether, given the state of the art, a person skilled in the art would have obtained the patent's technical solution using their technical knowledge while carrying out simple operations. Inventive step was to be defined in terms of the specific problem encountered by the person skilled in the art.

In other words, the CD Paris applied a two-step test for determining inventive step:

1. Identify one or more teachings in the prior art that a person skilled in the art would have considered when developing a similar product or process at the patent's priority date.
2. Determine whether it would have been obvious to the person skilled in the art to solve the technical problem in the same way as the claimed solution, based on reasonable and realistic disclosure of the prior art.

In order to find relevant prior art (step one), the underlying problem, which is solved by the claimed solution, needs to be identified. The court in particular stated that "realistic starting points are the documents which disclose the main relevant features as those disclosed in the challenged patent or which address the same or a similar underlying problem".

Applying this method, the court concluded that the underlying problem the invention tried to solve was the provision of a vaporizer allowing the liquid to be viewed. It found that neither the common general knowledge nor the disclosed state of the art provided the skilled person with any indication that at least part of the cartomizer body should be designed as translucent to make the liquid visible from the outside.

Comparing this inventive step test to the EPO approach

Overall, this approach is similar though not identical to the one before the EPO. Both essentially employ the EPO's could-would approach. Furthermore, the burden of proof for asserting inventive step and the avoidance of hindsight are congruent under both regimes. However, one notable difference is that the UPC's approach identifies the underlying problem that the patent is trying to solve based only on the patent itself. To the contrary, the EPO looks at the patent together with the prior art.

Another divergence from the EPO practice is that the assessment of inventive step starts from a realistic starting point in the prior art and that there can be several realistic starting points. It is not necessary to identify the "most promising" starting point as is typical with the EPO. The CD Paris set out this method in NJOY v. Juul Labs (UPC_CFI_315/2023), and generally objected to the way in which the EPO sets the starting point for the examination of inventive step. The CD thought that limiting the assessment to "the closest prior art" risks introducing subjective elements into the evaluation. Still, in a particular case, it may be justified for procedural efficiency to minimize the assessment of other elements of the state of the art.

However, the differences do not have to result in divergent outcomes. In Avago v. Tesla (UPC_CFI_54/2023), the LD Hamburg concluded that both approaches would lead to the same outcome because there was no incentive for a skilled person to consider the patent's proposed problem as obvious (UPC) nor it was an obvious solution considering the state of the art (EPO).

A different UPC approach? Edwards Lifesciences Corporation v. Meril GmbH, Meril Life Sciences Pvt Ltd., and Meril Italy S.r.l. UPC_CFI-501/2023 —April 4, 2025

In this case, Edwards claimed that Meril infringed EP 3 669 828 directed at implantable prosthetic heart valves and Meril counterclaimed for invalidity. The LD Munich recently maintained the patent, rejecting arguments regarding added matter and lack of novelty and confirming that the patent was inventive.

In doing so, the UPC's most active division expressed its intention to henceforth primarily apply the EPO's problem-solution approach exactly and to the extent feasible to enhance legal certainty and further align the jurisprudence of the UPC with that of the EPO. The same LD, though with different judges, had already ruled in close alignment with the EPO practice back in 2023.¹

Key takeaways

The UPC test for inventive step is still not settled case law. Until the most recent decision in Edward v Meril, it appeared that the UPC was going to diverge somewhat from the EPO's problem-solution approach in a few nuanced aspects. Now, however, it remains to be seen if the entire UPC will heed the LD Munich's clarion call for convergence in assessing inventive step in tandem with the EPO. It is unusual for a first instance court (albeit an important one) to instruct other UPC courts in this way and we may still get clarification from the Court of Appeal on this issue.

Following the EPO's problem-solution approach would no doubt help with legal certainty. It provides an objective framework for reaching a predictable view, it has been applied extensively by the EPO, and it is widely understood.

Until the Court of Appeal provides more definite guidance, when getting involved in nullity proceedings before the UPC, it would be advisable to assess the inventive step of the patent-in-suit both under the EPO and the UPC approaches, possibly with a stronger bias towards the former if the case appears before the LD Munich.

Footnote

1. LD Munich in NanoString v. 10x Genomics, UPC_CFI_2/2023, September 19, 2023.

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