GERMANY TRENDS AND DEVELOPMENTS Contributed by: Dr. Peter Klusmann, Gregor König, Dr. Dirk Schüßler-Langeheine and Dr. Lasse Christian Weinmann, Hoffmann Eitle
Possible future interplay with the UPC Historically, the concept of the reasonable expectation of success was introduced by some of the earlier decisions of the EPO’s Boards of Appeal, such as T 2/83 and T 149/93, and it was developed further by numerous further decisions of the EPO. The concept was eventually adopt - ed by the German courts, albeit in a modified way, ie, not applying it to the claimed invention directly, but to the next step to be performed by the skilled person. If there are multiple steps on the path to the invention, each step is assessed in this way, using the outcome of the previous step as an incentive (in contrast to the EPO’s “problem-solution” approach). Against this background, it will be interesting to see whether and how the case law of the German courts and the EPO, on a reasonable expectation of success, will influence the UPC and vice versa. While the UPC appears to have accepted this concept in principle, it has not (yet) defined a set of criteria for assessing a rea - sonable expectation of success. In the Nanostring v 10x Genomics case (UPC CoA 335/2023) relating to provisional measures, the Court of Appeal (CoA) of the UPC held that “problems that regularly arise” in the technical field at issue would not have prevented a skilled person from carrying out the relevant tests (see p. 33). This approach of the CoA is consistent with the notion that – in accordance with EPO and German practice – certainty of success is not required. Further, in the Sanofi v Amgen case (UPC 1/2023), the UPC Central Division (Section Munich) held that “The absence of a reasonable expectation of success (or more in general: non- obviousness) does not follow from the mere fact that other ways of solving the underlying prob -
lem are also suggested in the prior art” (head - note 4). Again, this notion is generally consistent with the case law of the EPO and the German courts, according to which the selection of one out of several obvious alternatives cannot estab - lish an inventive step. Accordingly, it appears that the UPC applies the concept of a reasonable expectation of suc - cess in a way that reflects a “common ground” of the approaches taken by the EPO and the German courts. Further cases will show whether the UPC’s approach is closer to the EPO or the German courts. In this regard, it is interesting to note that, unlike the EPO, the UPC currently requires only a “real - istic starting point” in the prior art but does not adhere to the concept of selecting a “closest pri - or art” document for the assessment of inventive step, suggesting that the UPC does not apply the EPO’s problem-solution approach strictly (see UPC 1/2023, headnote 3). This approach taken by the UPC resembles that of the German FCJ. The similarity between these courts’ views on inventive step may help to promote a further interplay between the case law of the UPC and the FCJ on inventive step in the future. Divisional Applications in the Focus of Competition Law Patent disputes, particularly major ones, often involve several members of the same patent family. EPO practice allows the applicant to branch off divisional applications as long as an application is pending (Article 76 EPC) and is traditionally little concerned with questions of double patenting, albeit in cases where the pat - ent claims at issue cover the same, ie, identi - cal, subject matter (c.f. EBoA, G 4/19). In con - sequence, unless literally identical, a patentee may file actions based on multiple patents cov -
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