(includes decisions through 2026-07-31)
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up through 2026 July
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#actionable UPC_CoA_901/2025; 2026-4-17; Abbott v Sinocare and A. Menarini Diagnostics
ORIGINAL-HEADNOTE:
1. A claim feature should not be excluded from the assessment of inventive step merely because it is a non-technical feature, i.e. a feature which, on its own, would be considered a “non-invention” under Art. 52(2) EPC. A feature that is non-technical as such may still contribute to the technical character of the claimed invention as a whole by its interaction with the other claim features. Therefore, the interrelationship and functioning of the claim features must be assessed together.
2. Pursuant to R. 220.1 RoP, only a party adversely affected by a decision may lodge an appeal. The same applies to a cross-appeal pursuant to R. 237 RoP. A cross-appeal is inadmissible if the only purpose of the cross-appeal is to change (a certain part of) the reasoning of the Court in First Instance, which in its result is in favour of the party filing the cross-appeal.
PATENTOWNER/-APPLICANT: Abbott Diabetes Care Inc.
OPPOSING-PARTY: Sinocare Inc.; A. Menarini Diagnostics s.r.l.
LEGAL PROVISIONS: Art. 52(2) EPC; R. 220.1 RoP; R. 237 RoP; R. 211 RoP; Art. 67 UPCA; Art. 69 UPCA
ORIGINAL-KEYWORDS: Jurisdiction; Claim construction; Infringement; Validity (added matter and inventive step); Urgency, necessity and balance of interests; Admissibility cross-appeal
CITED DECISIONS: T 641/00 (COMVIK), G 1/19, UPC_CoA_335/2023, NanoString v 10x Genomics, UPC_CoA_1/2024, VusionGroup v Hanshow, UPC_CoA_528/2024 and UPC_CoA_529/2024, Amgen v Sanofi/Regeneron, UPC_CoA_646/2024, Meril v Edwards, UPC_CoA_382/2024, Abbott v Sibio, UPC_CoA_899/2025, Sinocare v Abbott, UPC_CoA_317/2025, Barco v Yealink, UPC_CoA_365/2025, Knaus v Yellow
AI-FEEDBACK:
– Inventive step must be assessed on the claimed combination as a whole. A feature that looks informational or user-oriented in isolation can still produce a technical effect through its interaction with sensors, processors, displays and user inputs.
– An appeal or cross-appeal requires an adverse effect in the operative result. A party cannot cross-appeal merely to replace reasoning that already led to a favourable outcome.
– Example from the case: the glucose-monitoring claims displayed event icons together with monitored glucose values and allowed the user to open event details. The Court treated this interaction as contributing to improved technical assistance in diabetes management and found the invention more likely than not inventive. The respondents’ cross-appeal on urgency was inadmissible because the first-instance application had already been dismissed in their favour.
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#actionable 17 W (pat) 1/23; 2025-9-9; Kontaktplanprogramm-Erzeugungsvorrichtung
ORIGINAL-HEADNOTE:
Zur Bestimmung der „Aufgabe“ einer Erfindung.
AI-TRANSLATED-HEADNOTE:
On determining the “problem” underlying an invention.
LEGAL PROVISIONS: §§ 1, 4 PatG
CITED DECISIONS: X ZB 3/06, T 641/00 – Two Identities/COMVIK, BGH – Wiedergabe topografischer Informationen, BGH – Mirabegron, BGH – Quetiapin, BGH – Stereolithographiemaschine, BGH – Dreinahtschlauchfolienbeutel, BGH – Falzmaschine
AI FEEDBACK:
– The technical problem is an analytical tool, not a way to build the claimed answer into the question. It must be formulated generally and neutrally so that the prior art’s incentives are assessed only at the inventive-step stage.
– Genuine external requirements may form part of the problem, including non-technical constraints, but solution features cannot be relabelled as requirements simply because the examiner considers them arbitrary or non-inventive. Where it is doubtful that the skilled person would have addressed the narrowly framed task, the task must be stated more abstractly.
– Example from the case: the examining division framed the problem as translating specific PLC subprograms from one mnemonic language into another using particular definition information. That formulation already incorporated the core translation architecture. The court held the approach improper, although it independently found the claims obvious over D1 and ordered repayment of the appeal fee because of the flawed examination reasoning.
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#actionable T 0847/24; 2026-3-25
ORIGINAL-HEADNOTE:
If a granted claim defines a computer-implemented method for configuring a physical object which, when carried out, merely results in data representing that physical object, and not in the object itself, amending the claim such that it additionally includes the step of manufacturing the physical object so configured is, in view of Article 64(2) EPC, not allowable under Article 123(3) EPC (Reasons 6).
PATENTOWNER/-APPLICANT: Materialise NV
OPPOSING-PARTY: Lorenz Seidler Gossel Rechtsanwälte Patentanwälte Partnerschaft mbB
LEGAL PROVISIONS: EPC Art. 54, 56, 64(2), 69(1), 123(3); EPC Prot. Interpretation Article 69; RPBA 2020 Art. 12(4)
ORIGINAL-KEYWORDS: Inventive step – non-technical distinguishing feature – main request and auxiliary requests 2 to 4 (no); Extent of protection – protection conferred by Article 64(2) EPC – extension of protection conferred – auxiliary request 1 (yes)
CITED DECISIONS: G 0002/88, G 0001/04, G 0003/14, G 0001/16, G 0001/19, G 0001/24, T 0867/05, T 0547/08, T 1635/09, T 1791/16, T 0970/17, T 0312/19, T 1473/19, T 0367/20, T 0177/22, T 0439/22, T 1345/23, T 0837/24, UPC_CoA_335/2023 (NanoString Technologies v. 10x Genomics, 26 February 2024, rectified 11 March 2024), UPC_CoA_901/2025 (Abbott v. Sinocare, 17 April 2026), X ZR 33/10 (MPEG-2-Videosignalcodierung, 21 August 2012)
AI FEEDBACK:
– The protection conferred by a process claim must be assessed together with Article 64(2) EPC, which extends protection to products directly obtained by the claimed process. That product protection is additional to protection for carrying out the process itself.
– Adding a manufacturing step can therefore violate Article 123(3) EPC even though the amended method contains more steps and is narrower as a method. The amendment may newly bring a physical product within the direct-product protection of Article 64(2) EPC.
– The granted claim configured a maxillofacial implant and surgical guide in a computer and directly produced only data representing the configured objects. Auxiliary request 1 added the step of producing the implant. That amendment newly conferred protection on the physical implant, which was not directly obtained by the granted data-generating method, and therefore extended the scope of protection.
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#actionable T 1438/24; 2026-4-16; Two-array LED display/PHILIP MORRIS PRODUCTS
ORIGINAL-HEADNOTE:
[T]he automatic provision of visual indications of conditions prevailing in a technical apparatus may, in principle, produce a technical effect […].
… The actual difference between claim 1 and D1 resides solely in the decision to present different technical conditions simultaneously. This does not provide the user with any additional insight into the internal operation of the device beyond what is already disclosed in D1. Rather, it merely concerns the manner in which information already available in D1 is presented to the user.
While it may be accepted that the simultaneous presentation of multiple items of technical information may be perceived by some users as clearer or more practical, other users may regard such a presentation cluttered or less legible and may prefer the one-at-a-time presentation of D1. Be it as it may, according to the established case law, effects such as improved clarity of presentation or reduced cognitive burden, which merely reflect subjective user preferences, do not constitute technical effects and therefore cannot contribute to an inventive step […].
(See point 2.16 of the reasons)
PATENTOWNER/-APPLICANT: Philip Morris Products S.A.
LEGAL PROVISIONS: EPC Art. 52(2)(d), 56
ORIGINAL-KEYWORDS: Claim construction in light of G 1/24 – narrow claim interpretation based on description and drawings (no – not accepted); Inventive step – simultaneous display of different technical states of an e-cigarette instead of displaying them at different times (no – not technical) – display layout with a first annular area surrounding a second area (no – not technical)
CITED DECISIONS: G 0001/24, T 0115/85, T 0641/00, T 0928/03, T 1741/08, T 1562/11, T 1802/13, T 1999/23, T 2027/23
AI FEEDBACK:
– Automatically displaying a condition of a technical apparatus can have a technical effect when the information objectively assists the user in operating or controlling the apparatus. The mere choice to show already available information simultaneously rather than sequentially does not, by itself, add technical insight.
– Alleged improvements such as greater clarity, convenience or reduced cognitive burden are not technical when they depend on subjective user preferences. The arrangement of graphical information in an annular outer area around an inner area was likewise treated as presentation of information rather than a technical display solution.
– D1 already disclosed an e-cigarette display that could show progress through a smoking session and other device states, one at a time. The claim used separately driven inner and outer LED arrays to show two states simultaneously. Because this changed only how the same information was presented and did not improve control of the device, the difference could not support inventive step.
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#actionable T 1096/23; 2025-12-4
ORIGINAL-HEADNOTE:
When a complete granted dependent claim is incorporated into an independent claim of another category (here: method step -> method step carried out by an apparatus), then only the amendments related to the change of category can be examined for clarity under G3/14. (Grounds, 3.2.5)
PATENTOWNER/-APPLICANT: Marel A/S
OPPOSING-PARTY: Nordischer Maschinenbau Rud. Baader GmbH + Co. KG; MULTIVAC Sepp Haggenmüller SE & Co. KG
LEGAL PROVISIONS: EPC Art. 52(1), 54(1), 54(2), 56, 84, 123(2); RPBA 2020 Art. 13(2)
ORIGINAL-KEYWORDS: Novelty – main request and auxiliary request 1 (no) – auxiliary request 2 (yes); Inventive step – auxiliary request 2 (yes); Claims – clarity – auxiliary request 2 (yes); Amendments – auxiliary request 2 – allowable (yes) – change of category; Sufficiency of disclosure – auxiliary request 2 (yes)
CITED DECISIONS: G 0003/14
AI FEEDBACK:
– The headnote applies G 3/14 to a category change. Incorporating the complete wording of a granted dependent claim does not reopen every pre-existing clarity issue; only clarity problems arising from the conversion into the new claim category may be examined.
– For a computer-implemented method step, expressing the same step as functionality of the controller in an apparatus claim does not necessarily create ambiguity. The relevant question is whether the category change itself makes the claim unclear.
– Example from the case: granted dependent method claims defining sub-weight ranges and a shortage-based prioritisation variable were incorporated into apparatus claim 11 for a batching machine. The skilled person would understand that the controller implemented those steps in software, so the method-to-apparatus conversion introduced no new ambiguity; an alleged antecedent issue already present in the granted wording was not open to review.
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T 0558/21; 2025-12-15; Calcul cryptographique sur courbe elliptique/IDEMIA
ORIGINAL-KEYWORDS:
Procédure orale – requête de tenue de la procédure orale par visioconférence (refusée)
Vice substantiel de procédure – violation du droit d’être entendu (non)
Modifications – admises (oui)
Interprétation de la revendication 1 – sous-étape mentionnée dans la revendication n’est pas limitative
Exclusion de la brevetabilité – (non)
Activité inventive – effet technique (oui) – non-évidence au regard de l’état de la technique documenté pas contestée en recours
AI-TRANSLATED-KEYWORDS:
Oral proceedings – request to hold the oral proceedings by videoconference (refused)
Substantial procedural violation – violation of the right to be heard (no)
Amendments – admitted (yes)
Interpretation of claim 1 – sub-step mentioned in the claim is not limiting
Exclusion from patentability – (no)
Inventive step – technical effect (yes) – non-obviousness over documented prior art not contested on appeal
ORIGINAL-HEADNOTE:
1. Sur la pertinence de l’appartenance d’une invention à un « domaine technique » pour son caractère technique et pour l’identification des caractéristiques qui y contribuent, cf. points 29 et 42.
2. Sur la contribution technique d’une méthode mathématique de génération d’un point sur une courbe elliptique utilisé dans une application cryptographique, cf. point 40.
3. Sur la détermination des caractéristiques d’une invention qui contribuent à son caractère technique dans le cadre de l’approche COMVIK, cf. point 41.
AI-TRANSLATED-HEADNOTE:
1. On the relevance of an invention’s belonging to a “technical field” for its technical character and for identifying the features that contribute to that character, see points 29 and 42.
2. On the technical contribution of a mathematical method for generating a point on an elliptic curve used in a cryptographic application, see point 40.
3. On determining the features of an invention that contribute to its technical character under the COMVIK approach, see point 41.
AI FEEDBACK:
– Merely classifying cryptography as a “technical field” does not make every feature of a cryptographic invention technical. The decisive question is whether a feature contributes to producing a technical effect that solves a technical problem.
– A mathematical method for generating an elliptic-curve point is non-technical as such. In the claimed context, however, the secret parameter t was transformed by an electronic component into point P efficiently while reducing the risk that the secret could be recovered through a timing attack. That functional integration into the cryptographic application gave the combined steps a technical contribution.
– Under COMVIK, the relevant features are those that contribute to the invention’s technical character. The Board may recognise a technical contribution by the mathematical steps as a whole without deciding immediately that every mathematical detail contributes; arbitrary details can still be identified later, including through comparison with the prior art.
– Example from the case: in the disclosed PACE password-authentication embodiment, t was derived from the user’s password and therefore represented a secret. The claimed operation pattern generated the elliptic-curve point used in the protocol while keeping the number and type of important operations sufficiently uniform to resist timing analysis.
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T 0035/20; 2024-5-17; Double press to pay/APPLE
ORIGINAL-KEYWORDS:
Inventive step – double press on button with integrated fingerprint sensor to pay with phone – (yes – not a mere user requirement)
ORIGINAL-HEADNOTE:
The term “user requirement” is often used when assessing the technicality of features of user interfaces. The Board understands the term to refer to needs and preferences defined by the end user of a system, who does not possess any technical understanding of the system. Under the Comvik approach (T 641/00 – Two identities/COMVIK), such user requirements may appear in the formulation of the technical problem as they do not make any technical contribution. It was confirmed in T 1463/11 – Universal merchant platform/CardinalCommerce that non-technical (user) requirements cannot normally specify any technical matter or be based on technical considerations. That is not to say that they cannot refer to the underlying technical system at all. Just like the technically skilled person, the user starts from the technical system of the prior art; user requirements do not appear in a vacuum. Thus, if the user uses software on a computer, he may formulate non-technical requirements relating to this software (see e.g. T 2019/12 – Angabe einer Order/Lacqua). Analogously, if, as in the present case, the system is a mobile phone, the user may formulate requirements relating to the use of the phone, as long as they do not involve technical considerations or require technical understanding.
(See point 8 of the reasons)
AI FEEDBACK:
– A “user requirement” is a goal or preference that a non-technical end user can formulate, such as making payment faster, reducing the number of steps, or allowing payment while the rest of the phone remains locked. Such a requirement can be included in the technical problem under COMVIK but cannot itself support inventive step.
– The boundary is crossed when the supposed requirement already embodies technical considerations that the skilled person must investigate. A simple mapping such as pressing a known “pay” button may remain non-technical, whereas coordinating a timed double press with a fingerprint sensor that already performs the phone-unlock function is a technical design choice.
– The Board therefore assessed the concrete interaction and implementation rather than treating every user action as non-technical. It found no prior-art suggestion for the claimed dual use of the home button and integrated biometric sensor and considered the solution inventive.
– Example from the case: on the iPhone 6, the user first unlocked the device and then opened the payment app, authenticating again with the fingerprint sensor. The claimed method instead detected a second press within a predetermined interval, such as 300 ms, and used the integrated fingerprint reading to enable payment directly from the lock screen; without the second press, the device merely unlocked.
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