The Emerging Structure of Inventive Step before the UPC

1. Introduction

Recent case law of the Unified Patent Court (“UPC”) concerning inventive step under Article 56 EPC increasingly suggests the emergence of a distinct analytical structure.

In particular, Meril v. Edwards is notable because it contains one of the most structured explanations to date of the UPC Court of Appeal’s approach to inventive step (UPC CoA, 25 November 2025). While the Court expressly recognised the importance of the European Patent Office (“EPO”) problem-solution approach (“PSA”), it also emphasised that different EPC jurisdictions have historically used different methodologies, all directed to the same legal question under Article 56 EPC.

At the same time, the Court adopted terminology and analytical steps that differ in several respects from the conventional PSA sequence. In particular, the Court placed emphasis on the “objective problem”, “realistic starting points”, and whether the skilled person would take the relevant “next step” toward the claimed invention.

The significance of the decision therefore lies less in any rejection of the PSA itself, and more in the emergence of a more flexible and less formalistic reasoning structure.

2. The EPO Problem-Solution Approach

The EPO’s problem-solution approach traditionally follows a relatively structured analytical sequence.

First, the decision-maker identifies the “closest prior art”. Second, the distinguishing features and their technical effects are determined, leading to formulation of the “objective technical problem”. Third, the analysis turns to whether the skilled person would have arrived at the claimed solution.

Within this framework, the selection of the closest prior art plays an important role. EPO case law has frequently stated that the closest prior art should generally relate to the same or at least a similar purpose or effect as the claimed invention.

The objective technical problem is therefore usually formulated only after the starting point has been selected and the differences over that prior art have been identified.

This structure is closely linked to the PSA’s anti-hindsight function. By deriving the technical problem from objectively identified differences over the selected prior art, the PSA seeks to avoid reconstructing the invention with knowledge of the claimed solution.

At the same time, EPO practice itself recognises that inventive-step analysis may involve more than one possible starting point and ultimately depends on the realistic technical perspective of the skilled person at the priority date (T 0855/15).

3. German case law：Inventive Step Beyond the “Closest Prior Art”

German case law has traditionally approached inventive step in a somewhat less formalistic manner.

The German Federal Court of Justice (“BGH”) has repeatedly emphasised that inventive-step analysis should not mechanically depend on identifying a single privileged “closest prior art”.

In BGH “Olanzapin” and BGH “Fischbissanzeiger”, the BGH stated that assessment of obviousness cannot always proceed exclusively from the “closest” prior art. This line of reasoning was later reaffirmed in BGH “Gestricktes Schuhoberteil” and BGH “Spinfrequenz”, where the Court explained that classification of a document as the “nächstkommender Stand der Technik” is neither sufficient nor necessary.

Instead, German case law traditionally places stronger emphasis on whether the skilled person would realistically have had a concrete technical reason — an “Anlass” — to proceed from a particular starting point toward the claimed solution.

The focus is therefore less on formal ranking of prior-art documents and more on realistic technical development paths and technical motivation.

This does not necessarily lead to fundamentally different substantive outcomes from EPO practice. However, the analytical structure and reasoning style differ in emphasis.

4. The UPC Framework in Meril v. Edwards

The UPC Court of Appeal’s reasoning in Meril v. Edwards provides a particularly structured explanation of the UPC’s current approach to inventive step.

The Court first expressly recognised the diversity of approaches within EPC member states:

“National courts of the various EPC countries have different approaches and use different guidelines when assessing whether an invention involves an inventive step.”

The Court referred both to the EPO’s problem-solution approach and to more “holistic” approaches associated with jurisdictions such as Germany and the UK. It then stated that these approaches are:

“merely guidelines”

for answering the same statutory question under Article 56 EPC.

Importantly, the Court did not treat the PSA as the exclusive or mandatory structure for inventive-step analysis. The Court stated:

“It first has to be established what the object of the invention is, i.e. the objective problem.”

The Court further explained that this assessment must be carried out:

“not by looking at the individual features of the claim, but by comparing the claim as a whole in the context of the specification and the drawings”

and by considering the “inventive concept” and “technical teaching” underlying the invention.

Structurally, this differs from the conventional PSA sequence. Under the PSA, the closest prior art is usually selected first, and the objective technical problem is formulated only afterwards. In Meril v. Edwards, by contrast, the Court begins with the object of the invention itself.

The UPC framework therefore places stronger emphasis on the invention as a whole and on the technical teaching disclosed in the patent specification. Only afterwards did the Court turn to prior-art starting points. The Court stated:

“The claimed solution is obvious when … the person skilled in the art, starting from a realistic starting point … would (and not only ‘could’) have arrived at the claimed solution.”

The Court further explained:

“A starting point is realistic if the teaching thereof would have been of interest to a person skilled in the art who … wishes to solve the objective problem.”

Importantly, the Court also stated:

“There can be more than one realistic starting point.”

This terminology differs noticeably from the traditional emphasis on identifying a single “closest prior art”. Instead, the focus shifts toward whether the prior art would realistically have attracted the skilled person’s attention in light of the technical problem to be solved.

The Court also expressly introduced the concept of technical motivation:

“The person skilled in the art has no inventive skills and no imagination and requires a pointer or motivation (in German: ‘Anlass’)…”

The Court continued:

“…that, starting from a realistic starting point, directs them to implement a next step in the direction of the claimed invention.”

And further:

“a claimed solution must be considered not inventive/obvious when the person skilled in the art would take the next step … and arrive at the claimed invention.”

The explicit use of the German term “Anlass” is particularly notable.

Moreover, throughout the decision, the Court repeatedly focused not simply on whether modifications were technically possible, but whether the prior art would realistically motivate the skilled person to proceed toward the claimed solution.

This is especially visible in the Court’s analysis of the Levi prior art. The Court repeatedly stated that the proposed modifications would “go against the teaching” of Levi and that there was no sufficient “incentive” for the skilled person to make those changes.

Similarly, when discussing combinations with vascular stent prior art, the Court emphasised the differing technical requirements between stents and prosthetic heart valves, concluding that the skilled person would require a “strong motivation” before transferring features from one field to the other.

In certain respects, this reasoning structure appears closer to long-standing German inventive-step jurisprudence, which traditionally places strong emphasis on realistic technical motivation and development paths rather than on the formal identification of a single “closest prior art”.

5. A More Holistic Structure?

The reasoning structure emerging from recent UPC case law appears, at least in some respects, more “holistic” than the conventional PSA sequence.

The focus is less on a rigid stepwise comparison of isolated distinguishing features and more on the invention as a whole, the underlying technical teaching, realistic development paths, and whether the skilled person would genuinely proceed toward the claimed solution.

This does not necessarily mean that the UPC is departing from the substantive logic of Article 56 EPC or from the anti-hindsight concerns underlying the PSA. Rather, the UPC appears to be placing somewhat less emphasis on the formal structure of selecting a single “closest prior art”, and somewhat greater emphasis on realistic technical motivation and whether the skilled person would actually take the relevant technical path at the priority date.

In this respect, recent UPC reasoning may be seen as moving toward a more flexible and practice-oriented structure for inventive-step analysis.

6. Concluding Remarks

Recent UPC case law does not suggest a rejection of the EPO’s problem-solution approach. On the contrary, the UPC Court of Appeal expressly recognised the PSA as an important methodology under Article 56 EPC.

At the same time, the structure adopted in Meril v. Edwards differs in several respects from the conventional PSA sequence. The Court placed particular emphasis on the “objective problem”, “realistic starting points”, technical “motivation” (“Anlass”), and whether the skilled person would realistically take the relevant “next step” toward the invention.

The resulting reasoning structure appears more flexible and more holistic than the traditional PSA framework, with stronger emphasis on realistic technical development paths and on the invention as a whole.

Whether these methodological differences will ultimately lead to materially different substantive outcomes from EPO practice remains to be seen. For the moment, however, recent UPC decisions suggest an increasing focus on realistic technical motivation and on the actual path that the skilled person would have followed at the priority date.