Liz Cohen has recently been quoted in IAM’s article “Amgen and Edwards win in UPC’s first inventive step appeal decisions”.

The article reports on the Unified Patent Court’s (UPC) first full appellate decisions on inventive step, in which Amgen and Edwards Lifesciences both succeeded in defending their patents. Crucially, the UPC Court of Appeal used the opportunity to set out a harmonised, holistic inventive step test that diverges from the European Patent Office’s strict problem-solution approach.

When asked about the Amgen decision, Liz said, “This [Amgen] decision will require courts to assess the inventive concept and then determine whether there was a reasonable expectation of success in solving the objective problem from a realistic starting point.”

Liz continued, “The Court of Appeal’s judgment in this case is a pivotal ruling for the UPC,” and “By rejecting the EPO’s ‘problem-solution’ test and setting out a holistic inventive step test, the court has finally been able to set out a centralised approach, putting an end to the differing tests being adopted by the different divisions. Parties now have a clearer framework for evaluating patent validity in the UPC.”

Finally, Liz mentioned, “This shift will have significant impact on future cases,” and “aligning UPC practice more closely with national approaches such as the UK and reshaping how inventive step arguments are advanced across Europe. It will be interesting to see whether, in light of the differing tests, there are further disparities in validity decisions from the EPO and UPC.”

The full article can be accessed here (subscription required).