UPC revokes Amgen's patent in the first case filed at the UPC

The first case to be lodged at the UPC has reached a full decision on the merits. Today, the Munich seat of the UPC's Central Division published its decision on the revocation of Amgen's patent in UPC case number 1/2023 and the counterclaim for revocation filed in the parallel infringement action (14/2023, which had been ordered to be dealt with jointly) as two separate judgements identical in content:

• Sanofi-Aventis v Amgen (CFI 1/2023) – This was the original revocation case filed in the Munich seat of the UPC central division, just minutes before Amgen filed its infringement action at the Munich local division of the UPC, on 1 June 2023 when the UPC first started receiving cases.
• Regeneron v Amgen (CFI 14/2023) – This was the counterclaim for revocation lodged by Regeneron in Amgen's infringement claim against Sanofi-Aventis and Regeneron, brought at the Munich local division, which was transferred from the local division to the central division.

The patent was in force in the following UPC states: Austria (AT), Belgium (BE), Bulgaria (BG), Denmark (DK), Estonia (EE), Finland (FI), France (FR), Germany (DE), Italy (IT), Latvia (LV), Lithuania (LT), Luxembourg (LU), Malta (MT), The Netherlands (NL), Portugal (PT), Slovenia (SI) and Sweden (SE).

The UPC's findings on revocation: 

• On claim interpretation: When interpreting a patent claim, the person skilled in the art does not apply a philological understanding, but determines the technical meaning of the terms used with the aid of the description and the drawings. From the function of the individual features in the context of the patent claim as a whole, it must be deduced which technical function these features actually have individually and as a whole. The patent description may represent a patent´s own lexicon. 
• "same invention": A claimed invention is to be considered the “same invention” as meant in Article 87 EPC (priority right) if the skilled person can derive the subject-matter of the claim directly and unambiguously, using common general knowledge, from the previous application as a whole. 
• Inventive step/obviousness: 
  • The assessment of inventive step starts from a realistic starting point in the prior art. There can be several realistic starting points. It is not necessary to identify the “most promising” starting point. 
  • In general, a claimed solution is obvious if the skilled person would be motivated to consider the claimed solution and would implement it as a next step in developing the prior art. It may be relevant whether the skilled person would have expected any particular difficulties in taking any next step(s). 
  • 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 problem are also suggested in the prior art and/or (would) have been pursued by others. The decisive question that has to be answered is whether the claimed solution is non-obvious. 
  • For assessing inventive step it is not the question whether the skilled person would inevitably arrive at the same result (falling within the scope of the claim or not). Rather, it is sufficient (but also necessary) for denying inventive step that the skilled person would without inventive contribution arrive at a result which is covered by a claim. 
  • A technical effect or advantage achieved by the claimed subject matter compared to the prior art may be an indication for inventive step. A feature that is selected in an arbitrary way out of several possibilities cannot generally contribute to inventive step. 

HSF European IP partners Sebastian Moore and Laura Orlando commented

"These are the first pharmaceuticals cases to reach a decision on the merits at the UPC. Both were filed on 1 June 2023, Day 1 of the UPC, making the time to their decisions an impressive 1 year, 1 month and 2 weeks, and likely increasing the appeal of the UPC to those seeking to resolve patent disputes quickly, although also illustrating the risks to patentees of the UPC's powers of central revocation." 

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