A 'Holistic' Approach To Inventive Step

In a decision dated 20 October 2025, the UPC Central Division in Paris has provided further guidance on the assessment of inventive step by the Court. As well as confirming the use of the same general 'problem and solution' approach of the EPO, the Court commented in particular on the identification of what can constitute realistic starting points for the assessment.

The 'heart' of inventive step
The case of Meril Life Sciences Private Ltd., Meril GmbH and Meril Italy S.r.l. vs Edwards Lifesciences Corporation (UPC_CFI_189/2024 + UPC_CFI_434/2024) related to an action to revoke EP 4 151 181 B1 that related to prosthetic heart valves. The claims as granted were found unallowable due to added subject matter. However, the patent was maintained based on an amended Auxiliary Request with the claims being held to comprise an inventive step.

When assessing inventive step, the Court stated that the assessment must be carried out in accordance with Article 56 EPC, which requires "[A]n invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art". This is of course the same legal test applied by the EPO during the application and opposition stages. However, the decision provides some interesting commentary on the UPC's interpretation of the test.

Start with a problem
In a first step, the identification of the objective problem underlying the claimed invention must be carried out in light of the patent's specification. The Court stressed that the problem should be identified in an abstract and neutral way as to avoid the risk of hindsight.

Be realistic
The second step – and often a critical one in practice – is to identify the starting point in the state of the art for making the assessment. Here the Court explicitly did not refer to the concept of a 'closest' piece of prior art but instead to "one or more realistic starting points" and further stated that "identification [of a realistic starting point] is left to the initiative of the parties".

The Court confirmed that a realistic starting point must be a document 'of interest' for solving the objective problem. They indicated that realistic starting points, in general, "must be pieces of evidence which disclose the main relevant features as those disclosed in the challenged patent" and "which address the same or a similar underlying problem". The Court went further in stating that "Indeed, only this evidence may be considered 'of interest' for solving the underlying problem".

Three prior art documents were considered as realistic starting points because the problems underlying them were similar to the one in the patent at issue and there were significant technical features in common.

Apply a holistic approach
The Court indicated that "a "holistic approach" – that is, a broader way of assessing this non-obviousness by considering the invention as a whole, rather than just focusing on isolated distinguishing features – appears, in general, to be more appropriate.".

However, the Decision was somewhat unclear whether this holisitic approach is any different to the well-known approach of the EPO. Indeed, when applying the approach to the facts of the case the Court found there was an inventive step for reasons that will be very familiar to EPO practitioners: – a lack of motivation to combine prior art; technical incompatibility of the prior art solutions; and a lack of expectation of success. On the latter point, the Court appeared swayed by the argument that "heart valves are devices wherein the performance is highly sensitive to any variation in structure".

Overall, the approach of the Court to inventive step was in line with expectations based on the case law of the EPO. Reference to a 'more appropriate' holistic approach may need to be clarified, but for now this does not seem to be indicating any substantial departure in the assessment of inventive step.