{"id":1819,"date":"2026-10-16T12:12:43","date_gmt":"2026-10-16T10:12:43","guid":{"rendered":"https:\/\/www.osservatorio-ip.it\/en\/?p=1819"},"modified":"2026-10-16T12:13:08","modified_gmt":"2026-10-16T10:13:08","slug":"the-person-skilled-in-the-art-according-to-the-upc-definition-and-role-in-assessing-inventive-step","status":"publish","type":"post","link":"https:\/\/www.osservatorio-ip.it\/en\/2026\/10\/16\/the-person-skilled-in-the-art-according-to-the-upc-definition-and-role-in-assessing-inventive-step\/","title":{"rendered":"The person skilled in the art according to the UPC: definition and role in assessing inventive step"},"content":{"rendered":"\n<p class=\"wp-block-paragraph\">On 4 May 2026 (UPC_CFI_552\/2025), the Central Division of the Unified Patent Court, sitting in Milan, decided to revoke the European patent EP 3 854 403, owned by the Chinese Academy of Military Medical Sciences (hereinafter AMMS), relating to the use of Remdesivir in the treatment of SARS-CoV-2 infections. The decision, handed down following the invalidity proceedings brought by Gilead Sciences, is noteworthy not so much for its outcome as for the way in which the Panel defined the concept of <strong>a \u2018person skilled in the art\u2019<\/strong> within the meaning <strong>of Article 56 EPC,<\/strong> providing guidance that extends well beyond the scope of the specific case.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The patent in question, with a priority date of 21 January 2020, claimed the use of Remdesivir (already known as a broad-spectrum antiviral) for the treatment of SARS-CoV-2 infections, the virus which had only just been identified in Wuhan at the time. Technically speaking, this is a patent for a further therapeutic use, meaning that whilst the molecule itself was already known, the novelty lies in a new therapeutic application. Gilead challenged the validity of the patent on two grounds: insufficient description and lack of inventive step, arguing that, as at the priority date, the choice of Remdesivir as a therapeutic candidate against the new coronavirus was obvious to a person skilled in the art. The Board rejected the first ground of appeal but upheld the second, revoking the patent on the grounds that it failed to meet the requirement of inventive step. <\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li><strong>The person skilled in the art as an objective benchmark<\/strong><\/li>\n<\/ul>\n\n\n\n<p class=\"wp-block-paragraph\">To carry out both assessments, it is necessary to establish through whose eyes the patent is viewed. Article 56 EPC requires that the invention must not be obvious to a person skilled in the art, <strong>a hypothetical figure<\/strong> constructed by the court on a case-by-case basis to establish an <strong>objective benchmark<\/strong>. Anchoring the judgement to an \u2018average\u2019, standardised technical expert, rather than to the abilities of the adjudicator or the parties\u2019 consultants, allows the same yardstick to be applied to different disputes, regardless of who decides them.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">Defining this figure is an essential step as it directly affects the outcome, because an expert defined in a narrower or broader sense has access to a different body of knowledge, and this can alter whether the invention would have appeared obvious to them or not. In the Remdesivir case, Gilead argued that the expert should be a virologist specialising in emerging viral diseases and antivirals, whilst AMMS proposed an expert with no ties to pharmaceutical companies and a broad perspective that also encompassed vaccines and antibodies. The Panel based the definition on the criteria previously established by the UPC Court of Appeal: the expert works in <strong>the technical field of the problem<\/strong> that the invention solves, possesses basic knowledge and <strong>average-level skills<\/strong>, and is able to carry out <strong>routine tasks<\/strong> based on their general knowledge, sector-specific knowledge and that contained within the prior art \u2013 <strong>the<\/strong> so-called <strong>\u2018common general knowledge<\/strong>\u2019, that is, the body of knowledge available through reliable and commonly used sources, excluding confidential or non-readily accessible information.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The practical consequence is that the skilled person \u2018knows\u2019 everything that is relevant in their field, but <strong>does not possess any inventive capacity of their own<\/strong>; indeed, to arrive at the patented solution, they require a lead which, <strong>starting<\/strong> from a <strong>realistic point<\/strong>, guides them in that direction. On this basis, the Board settled the issue of affiliations raised by AMMS, given that the figure, being normative and abstract, cannot be characterised by links to specific industrial entities, because the professional background of a hypothetical real-world expert neither adds to nor detracts from the body of knowledge possessed by the standard skilled person as at the priority date.<\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li><strong>From <em>the problem-solution approach to<\/em> the holistic approach<\/strong><\/li>\n<\/ul>\n\n\n\n<p class=\"wp-block-paragraph\">Having defined the expert, it remains to be established how to use them to assess whether the invention was obvious, and here the decision highlights a difference in method between the practice of the European Patent Office and that of the UPC. The EPO traditionally applies the <strong>problem-solution approach<\/strong>, whereby it identifies the prior art document most similar to the patent (<strong><em>closest prior art<\/em><\/strong>) and asks whether the expert, starting from that point, would have arrived at the same claimed solution.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">The UPC, whilst not rejecting this method, supplements it with a <strong>\u2018holistic\u2019 approach<\/strong>: it first identifies the technical problem that the patent aims to solve, by reading the entire document as a coherent whole, and only then assesses whether the skilled person, starting not necessarily from the closest prior art but from a realistic starting point, and without any clues already suggesting the solution, would nevertheless have arrived at that solution. This caution serves to avoid <em>\u2018hindsight bias<\/em>\u2019 \u2013 <strong>the error of retrospective judgement<\/strong> \u2013 since there is a risk that an already known invention may appear obvious simply because its outcome is known, thereby reconstructing backwards a logical path which, at the priority date, was by no means a foregone conclusion.<\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li><strong>Reasonable expectation or mere hope of success?<\/strong><\/li>\n<\/ul>\n\n\n\n<p class=\"wp-block-paragraph\">Another crucial aspect of the assessment of inventive step concerns the distinction between <strong>a \u2018reasonable expectation of success\u2019<\/strong> and <strong>a \u2018mere hope of success<\/strong>\u2019. When the expert, starting from their own realistic point of departure, identifies a possible solution to the technical problem, it is not enough for that solution to be conceivable in the abstract; one must ask whether the expert would have had a reasonable expectation that it would work, or merely a vague hope. The difference does not depend on the individual researcher\u2019s state of mind, but on an <strong>objective fact<\/strong>: there is a reasonable expectation of success when the available scientific data concretely indicate that the solution can produce the desired result, whilst acknowledging the margin of uncertainty typical of any experimentation; by contrast, there is mere hope when the solution is based on mere assumptions or on contradictory sources, to the extent that the result appears possible but not reasonably foreseeable. The more solid the starting point, the closer the expectation of success comes to the level of foreseeability that excludes inventive step.<\/p>\n\n\n\n<ul class=\"wp-block-list\">\n<li><strong>Application to the specific case and conclusion<\/strong><\/li>\n<\/ul>\n\n\n\n<p class=\"wp-block-paragraph\">By applying the assessment criteria described to the specific case, the expert would have known, from documents published a few days before the priority date, that the new coronavirus was highly homologous to one that had already been effectively treated with Remdesivir, thereby concluding that this information would have given him a <strong>reasonable expectation of success<\/strong> \u2013 not merely a hope \u2013 and that the patented solution was therefore the result of <strong>routine work<\/strong> rather than an <strong>inventive step<\/strong>.<\/p>\n\n\n\n<p class=\"wp-block-paragraph\">Ultimately, the decision demonstrates how the outcome of an assessment <strong>of inventive step<\/strong> depends on a multi-stage process: first, the definition of the person skilled in the art \u2013 an abstract figure with no real affiliations \u2013 and second, the reconstruction of what that person would actually have known and been able to deduce on the priority date, without indulging in hindsight or allowing themselves to be influenced by subjective assessments of the available scientific sources.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>On 4 May 2026 (UPC_CFI_552\/2025), the Central Division of the Unified Patent Court, sitting in Milan, decided to revoke the European patent EP 3 854 403, owned by the Chinese Academy of Military Medical Sciences (hereinafter AMMS), relating to the use of Remdesivir in the treatment of SARS-CoV-2 infections. The decision, handed down following the [&hellip;]<\/p>\n","protected":false},"author":3,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"inline_featured_image":false,"footnotes":""},"categories":[170],"tags":[258,218,257,219],"class_list":["post-1819","post","type-post","status-publish","format-standard","hentry","category-patents-and-utility-models","tag-inventive-step","tag-patents","tag-person-skilled-in-the-art","tag-upc"],"acf":[],"_links":{"self":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1819","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/users\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/comments?post=1819"}],"version-history":[{"count":2,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1819\/revisions"}],"predecessor-version":[{"id":1821,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/posts\/1819\/revisions\/1821"}],"wp:attachment":[{"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/media?parent=1819"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/categories?post=1819"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.osservatorio-ip.it\/en\/wp-json\/wp\/v2\/tags?post=1819"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}