Key takeaways
The skilled person under Art. 56 EPC is a notional figure, i.e., affiliations to specific companies are irrelevant and inadmissible as differentiating characteristics
The skilled person represents an average level of knowledge in the relevant technical field, reflecting common general knowledge at the priority date. This fictitious individual cannot be identified with any real person. The skilled person is not required to possess or disregard a distinct affiliation, nor is it necessary. Differentiating characteristics such as connections to a specific company are not admissible.
The skilled person is an objective, rational figure and does not display fear of failure. Only documented prejudice in the literature can deter
The defendant incorrectly projected subjective attitudes onto the notional skilled person by likening him/her to a specific real expert. The skilled person questions information only when documented prejudice exists in the relevant literature, and the burden to highlight proven flaws lies with the party alleging them. Simply suggesting unexpected outcomes is inadequate. Recognising that risk and doubt are part of scientific progress, the skilled person would not reject a solution due to subjective concerns about possible failure.
Reasonable expectation of success versus mere hope of success is an objective assessment based on scientific data, not on the researcher’s subjective state of mind
A reasonable expectation of success exists when scientific data indicate that the tested solution can yield a positive result, despite experimental uncertainty. Thus, a reasonable expectation of success is based on reason and knowledge of scientific data, even though the skilled person knows that the outcome is not certain until it is subject of clinical trial. The greater the realism/reasonableness of the starting point, the greater the expectation of success. On the other hand, hope for success arises when the result is based on sheer assumptions or contradictions in sources, making the outcome possible but not reasonable.
Contributions from unrelated technical fields may also be relevant prior art when assessing inventive step
Such contributions may be relevant prior art provided they are reasonably capable of providing the person skilled in the art with useful guidance for improving the invention.
The content of specialized or standard journals does not, as a rule, coincide with the general common knowledge of the skilled person
Such journals does not normally fall within the “active” knowledge of the skilled person, especially when its identification requires in-depth and/or targeted research beyond what hte practitioner in the relevant field is accustomed to. However, it depends on the particular circumstances of each case. For example, studies published in journals could become part of the common general knowledge, given their relevance and connection to the “starting materials” at hand.
Sufficiency of disclosure requires at least one reproducible way, in case of functional features one technical concept, to carry out the invention, UPC_CoA_528/2024 and UPC_CoA_529/2024 (Art. 138(1)(b) EPC)
For second medical use claims the claimed “use”, which is based on a therapeutic effect, is part of the claim. Thus, the use including the therapeutic effect has to be sufficiently reproducibly disclosed in the patent as a whole.
The value of revocation proceedings may be set based on the relevant turnover of the parties (Guidelines of the Administrative Committee, R. 370(6) RoP)
The Court set the value of the proceedings based on European sales data of the patented product. The defendant’s argument that the value should correspond to the cost of the patent application was rejected.
Division
Central Division Milan
UPC number
UPC_CFI_552/2025
Type of proceedings
Revocation action
Parties
Claimant: Gilead Sciences, Inc.
Defendant: Academy of Military Medical Sciences
Patent(s)
EP 3 854 403
Body of legislation / Rules
Art. 56 EPC, Art. 83 EPC
