UPC & EPO-BoA - Inventive Step

Legal Practice today and tomorrow

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Online-Seminar

From 1.380,00 € plus VAT
Services & Process

Booking details

Online-Seminar

From 1.380,00 € plus VAT
Services & Process

This conference provides a comparative analysis of how the new Unified Patent Court (UPC) interprets the "inventive step" requirement compared to the EPO Boards of Appeal and national courts, and explores the potential impact on future case law.

Your speakers

Dr. Patricia Rombach

Dr. Patricia Rombach

Judge on the Court of Appeal of the Unified Patent Court (UPC), Luxembourg

Dr Rombach is a judge at the EPG Court of Appeal. Until the end of 2024, she was also a judge at the Federal Court of Justice.…

Steven Richard Kitchen

Steven Richard Kitchen

Technically Qualified Judge, Unified Patent Court, Copenhagen (Denmark)

Steven is a Technical Qualified Judge at the Unified Patent Court in the fields of electricity and physics, and also serves as a…

Dr. Kemal Bengi-Akyürek

Dr. Kemal Bengi-Akyürek

Chair of the Board of Appeal 3.5.05, European Patent Office, Munich (Germany)

Dr Kemal Bengi-Akyürek was Chair of the EPO Board of Appeal 3.5.03 from December 2019 to November 2023 and, since 1…

Sergio Arrojo

Sergio Arrojo

Member of the Boards of Appeal, European Patent Office, Munich (Germany)

Sergio Arrojo has been a Technical Member of the Boards of Appeal at the European Patent Office since 2018. Prior to this role,…

Dr. Klaus Bacher

Dr. Klaus Bacher

Presiding Judge, Patent Senate, Federal Court of Justice, Karlsruhe (Germany)

Since 2020 Klaus Bacher is the presiding judge of the 10th Civil Senate of the German Federal Court of Justice, this…

Dr. Andreas von Falck

Dr. Andreas von Falck

Conference Moderator,
Attorney, Partner, Hogan Lovells
International LLP, Düsseldorf (Germany)

Dr von Falck has been practising patent law for over 30 years. He represents companies in all contentious…

What to Expect

  • See the differences and similarities in case law, interpretation, and legal classification
  • Review your cases in light of established case law
  • Get answers to your questions about established case law
  • Learn more about future legal developments

Who Should Attend

Patent attorneys and lawyers-both in law firms and in-house, who conduct or assist in proceedings before the UPC and/or the EPO Boards of Appeal as well as IP managers and patent attorneys who draft or examine patent applications.

Objective of the Event

Inventive step is a key requirement for the grant (and maintenance) of a patent. Until now, legal practice in Europe has been largely shaped by the Boards of Appeal of the European Patent Office and the national courts.

The Unified Patent Court (UPC) has now also issued several decisions on this matter. In doing so, the UPC follows neither the Boards of Appeal nor national case law entirely. This might also have implications for the previous case law of the Boards of Appeal and national courts.

This conference will present the differences and similarities in legal interpretations in an integrative and comparative manner.

Your Benefit

  • See the differences and similarities in case law, interpretation, and legal classification
  • Learn more about future legal developments

Programme

from 09:00 to 17:00 CET

Inventive Step Case Law

Unified Patent Court | EPO Boards of Appeal | German Federal Court of Justice

  • Skilled person:
    • Criteria for determining the skilled person
    • Level of knowledge
  • Starting point:
    • "Closest" prior art?
    • Different starting points?
  • Objective technical problem:
    • Technical effect
    • Avoiding hindsight
  • Obviousness:
    • Sources for incentives
    • Common general knowledge
    • Arbitrary modifications
    • Reasonable expectation of success

Current issues regarding differing or shared legal perspectives
  • Does case law from the UPC present a divergence from the EPO's problem-solution approach?
  • How the joint treatment of infringement and validity impact claim interpretation and hence inventive step
  • Is justification needed for a particular choice of a starting point?
  • What is the connection between objective technical problem and (alleged) technical effect?
  • How to formulate the objective technical problem if the alleged technical effect is not achieved?
  • How to define the skilled person?
  • Must the selected starting point address the objective problem?
  • Is it possible to formulate multiple objective technical problems?
  • How do you distinguish between the objective technical problem and an unexpected bonus effect?
  • If yes: is it sufficient that the invention was obvious based on one of these problems?
  • Is a specific hint needed for the application of the skilled person's common general knowledge?

Inventive Step Case Law

Unified Patent Court | EPO Boards of Appeal | German Federal Court of Justice

  • Skilled person:
    • Criteria for determining the skilled person
    • Level of knowledge
  • Starting point:
    • "Closest" prior art?
    • Different starting points?
  • Objective technical problem:
    • Technical effect
    • Avoiding hindsight
  • Obviousness:
    • Sources for incentives
    • Common general knowledge
    • Arbitrary modifications
    • Reasonable expectation of success

Current issues regarding differing or shared legal perspectives

  • Does case law from the UPC present a divergence from the EPO's problem-solution approach?
  • How the joint treatment of infringement and validity impact claim interpretation and hence inventive step
  • Is justification needed for a particular choice of a starting point?
  • What is the connection between objective technical problem and (alleged) technical effect?
  • How to formulate the objective technical problem if the alleged technical effect is not achieved?
  • How to define the skilled person?
  • Must the selected starting point address the objective problem?
  • Is it possible to formulate multiple objective technical problems?
  • How do you distinguish between the objective technical problem and an unexpected bonus effect?
  • If yes: is it sufficient that the invention was obvious based on one of these problems?
  • Is a specific hint needed for the application of the skilled person's common general knowledge?

Downloads

Request the documents using our form.

Prospekt

Brochure

Weitere Informationen


Methodology and Agenda

The first part systematically addresses the different approaches for the assessment of inventive step. Representatives from the UPC and the EPO Boards of Appeal will each present the current case law regarding the individual approaches. This will be supplemented and commented on by the Chair of the Patent Senate of the German Federal Court of Justice. This ensures that you receive a comprehensive overview of the case law in a systematic sequence.

The second part will then address specific questions regarding differences and similarities and, based on the reasoning behind the decisions, examine what consequences these may have for future cases.


Technical requirements

You need a reliable Internet connection to take part in our online events. To have the best possible learning experience, we recommend that you use the latest version of the Microsoft Edge or Google Chrome browsers. You will need a headset, loudspeaker or telephone to play the audio. Further information is available here. Please check beforehand that your microphone or headset and camera are working properly. Do not access our services from a VPN since there are issues with the audio over such connections.

We have integrated Zoom video conferencing software into our Learning Space for our online training courses. If you are not authorised to use Zoom, please get in touch with us so we can make alternative arrangements for you to take part in our online training.


Free pre-meeting and technology check

You can attend one of our pre-meetings and explore our Learning Space free of charge. Registration is not required. You can find available dates for a pre-meeting in your customer portal. Click the green ‘Participate’ button in the pre-meeting in the customer portal and you will be redirected to the Learning Space.

The pre-meeting gives you the opportunity to explore our Learning Space and to familiarise yourself with the technology to start off your online training on the right foot. This is a non-binding offer for all our customers and not a prerequisite for participation. If a pre-meeting date does not suit you but you would still like a technology check, please contact us.


Access to and procedure for online events

Once you have registered for an event, we will send you the access information for your customer portal. Click here to log in to the customer portal using your email address and password. Please ensure you can access the customer portal before the day of the event.

All important or additional information and personal documents are available in your personalised customer portal. This is also where you start your online courses. If you do not have access to the customer portal yet, you can easily register here.

On the day of the event, you kick off your online training in the customer portal by clicking ‘Participate’ directly in the respective event. You will then be redirected to the Learning Space.

Learn more about our online events here.

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