As the Unified Patent Court (UPC) moves through its formative years, its growing body of decisions is beginning to reveal both its practical character and its jurisprudential direction. In this article, we take a step back to briefly revisit some of the most significant rulings to date and invite you to read (or read once again) cases that mark key milestones in the Court’s development and offer valuable insight into where its jurisprudence may be heading next.
This first recap focus on provisional measures, inventive step, patent claim interpretation and added matter.
1. Nanostring v 10X Genomics – UPC_CoA_335/2023
The first substantive decision of the Court of Appeal (CoA), issued on 26 February 2024, overturned a preliminary injunction ordered by the Local Division (LD) Munich. The CoA held that the patent in suit (EP 4 108 782) was more likely than not to be invalid for lack of inventive step, and thus the “sufficient degree of certainty” required for interim relief was not met. In doing so, the Court provided guidance on claim interpretation and provisional-measure standards under the UPCA.
In the CoA’s view, patent claim is not only the starting point but the decisive basis for determining the protective scope of a European patent under Article 69 EPC together with its Protocol. Its interpretation is not limited to the strict, literal wording; the description and drawings must always serve as explanatory aids and not only when ambiguities arise. This does not mean, however, that the claim is merely a guideline or that its subject-matter extends to whatever appears to be sought by the proprietor after reviewing the description drawings. The claim must be interpreted from the perspective of a skilled person. Applying this aims to ensure both adequate protection for the proprietor and sufficient legal certainty for third parties.
The CoA agreed with the Court of First Instance (CFI) that the standard of proof for provisional measures should not be set too high not to cause irreparable harm to the proprietor of the patent due to delays associated with a reference to proceedings on the merits, however, it must not be set too low either to avoid the Defendants from being harmed by an order for a provisional measure that is revoked at a later date. The court may require the applicant to provide reasonable evidence showing, to a sufficient degree of certainty, that they are entitled to bring proceedings under Article 47 UPCA, that the patent is valid and that their right is being infringed or is imminently threatened. This sufficient degree of certainty exists when the court considers it at least more likely than not that the applicant is entitled to initiate proceedings and that the patent is valid and infringed.
This decision can be read in its entirety in German and in English.
2. Sanofi v Amgen – UPC_CFI_1/2023 (CD Munich)
This judgement outlines the court’s approach to interpreting patent claims and assessing inventive step, highlighting the principles applied under Article 69 EPC and the criteria used to determine whether an invention is obvious in light of the prior art.
In its decision dated 16 July 2024, the Central Division (CD) Munich granted the revocation action filed by Sanofi against Amgen regarding EP 3 666 797 B1 due to its subject-matter not involving an inventive step over a prior art document referred to as “Lagace”.
The CD Munich followed the CoA’s decision on Nanostring v 10x Genomics (UPC_CoA_335/2025) when assessing patent claim interpretation, holding that it is not only the starting point, but the decisive basis for interpretation, which is not confined to a strict literal reading. The claim must be read from the viewpoint of a skilled person, who determines the technical meaning of the terms used with the help of the description and drawings rather than through a philological approach. Each feature is to be interpreted in light of the claim as a whole, and its technical function – individually and collectively – must be derived from its role within the claim. A patent may define its own terms and thus act as its “own lexicon”.
When assessing inventive step, the CD Munich decided not to adopt the EPO’s “problem-solution approach”, which would require identifying the closest prior art. Instead, it considered that a “realistic starting point” is sufficient – one whose teaching would have been of interest to a skilled person seeking, at the priority date, to develop a similar product or method addressing a similar underlying problem. From this realistic starting point, the question would be whether it was “obvious” for the skilled person to arrive at the claimed technical solution, which depends on whether the skilled person would be motivated to consider and implement the claimed solution as a next step in developing the prior art. Particular difficulties with such steps may show that it was not obvious and a “reasonable expectation of success” may indicate, or even be required for, a lack of inventive step. A technical effect or advantage compared to the prior art may indicate inventiveness, while an arbitrarily selected feature generally cannot contribute to inventive step.
This decision can be read in its entirety in English
3. Abbott v Sibio – UPC_CoA_382/2024
On 14 February 2025, the CoA overturned a decision issued by the LD The Hague that considered the patent at suit (EP 3 831 283) more likely than not invalid in view of added matter. The CoA found that the patent was in fact more likely than not valid and infringed, granting the provisional measures.
To the CoA, disclosure covers not only what a skilled person, at the priority date, would directly and unambiguously understand from the application as filed together with their common general knowledge, but also what is implicitly disclosed, namely, information that follows clearly and unequivocally from what is expressly stated.
The Court further observed that the analysis of added matter is not confined to the specific passages of the original application identified by the patentee during EPO examination as support for amended claims. Instead, those passages must be interpreted in light of the overall disclosure of the application.
This decision can be read in its entirety in English.
By Paula Terzini Leite
