NanoString v Harvard College (UPC 252/2023)
Decision date:
17 October 2024
Osborne Clarke summary
- Harvard's patent was revoked in its entirety. The patent as granted was revoked for lack of novelty and auxiliary request 1 was rejected for lack of inventive step over the same piece of prior art.
- There was a disagreement between the parties as to whether the skilled biological scientist would be familiar with both in vitro and in situ techniques for the detection of biomolecules. The court considered that no distinction was made in the disclosure of the patent and so the skilled person should have experience of both.
- The assessment of novelty requires the determination of the whole content of the prior publication, which must "directly and unambiguously" disclose the claim with all the features.
- The court assessed inventive step as whether it would be "obvious for the skilled person to, starting from a realistic prior art disclosure, in view of the underlying problem, arrive at the claimed solution" (without a reference to the EPO's problem-solution approach).
- In general, the Munich CD stated that a claimed solution is obvious if, starting from the prior art, the skilled person would have been motivated to consider the claimed solution and to 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) and, depending on the facts of the case, it may be allowed to combine prior art disclosures. A technical effect or advantage achieved by the claimed subject matter compared to the prior art may indicate an inventive step. However, a feature selected in an arbitrary way out of several options cannot in general contribute to inventive step. The court emphasised that hindsight should be avoided.
- Harvard had made a preliminary objection regarding the jurisdiction of the UPC to hear the proceedings. The preliminary objection was later withdrawn and the parties agreed to submit to the jurisdiction of the court. However, the Munich CD held that the court must examine its international jurisdiction of its own motion when required under EU law as per the recast Brussels Regulation. The Munich CD held that it had international jurisdiction and that it would not stay proceedings due to German national revocation proceedings. Articles 29 and 31 of the recast Brussels Regulation did not apply as the parties to the proceedings before the UPC were different to those before the German court. The court declined to stay proceedings under Article 30 of the recast Brussels Regulation on the basis of a number of factors, including:
- the parties had requested that the UPC issue a decision, including for the German part of the patent;
- the CD proceedings were more advanced than those at the German appeal court; and
- the Dutch and French parts of the patent were still in force and would have to be considered by the UPC regardless of the German proceedings.
Issue
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