Key takeaways
A realistic starting point in the same technical field does not automatically render the claimed invention obvious (Art. 56 EPC, Art. 65(1)–(2) UPCA).
Even if prior art qualifies as a realistic starting point, it remains relevant for the inventive step assessment that it relates to a different kind of device and solves a different problem than the claimed invention. Here, realistic starting point document disclosed a roof fan mounted in abutment against a roof, whereas the patent claimed an exhaust pipe extending through the roof.
Claim features defining “physical and spatial configuration” are fully limiting and not mere suitability requirements (Art. 69 EPC).
The feature “extending through an outer roof of a building” was held to physically and spatially define the claimed device rather than merely describing functional suitability. It requires a lower part under the roof, a part through the roof, and an upper part above it. Devices mounted flat against a roof surface were excluded.
The claimant bears the burden to substantiate why the skilled person would combine prior art references (Art. 54, 65(1) UPCA, R. 44(e)–(g), R. 25.1(b)–(d) RoP).
It is insufficient to show the skilled person could combine prior art. The claimant must demonstrate why the skilled person would do so and how the combination arrives at the claimed invention. The claimant’s failure to substantiate how the roof fan of D1 would be redesigned to include an exhaust pipe extending through the roof was decisive.
Knowledge that a component exists does not establish that its integration in a specific location was common general knowledge.
Although circular spirit levels were well known at the priority date, the Court held it was not common general knowledge to integrate such levels on top of conical cups in hats of exhaust pipes. Doing so was found to require inventive skill, not mere routine modification.
Division
Central Division Munich
UPC number
UPC_CFI_280/2025
Type of proceedings
Revocation action
Parties
Claimant: WIRPLAST – Więcek Spółka Jawna
vs.
Defendant: VILPE Oy
Patent(s)
EP 2 649 380 B1
Jurisdictions
UPC (Belgium, Denmark, Estonia, France, Germany, Latvia, Lithuania, Netherlands, Sweden)
Body of legislation / Rules
Art. 56 EPC, Art. 138(1)(a) EPC, Art. 69 EPC, Art. 32(1)(d) UPCA, Art. 33(4) UPCA, Art. 43 UPCA, Art. 54 UPCA, Art. 65(1)–(2) UPCA, Art. 69(1) UPCA, Art. 73(1) UPCA, Art. 76(2) UPCA, Art. 83(3) UPCA, R. 17.3 RoP, R. 25.1(b)–(d) RoP, R. 42 RoP, R. 44(e)–(g) RoP, R. 118.5 RoP, R. 220.1(a) RoP, R. 224.1(a) RoP
