The UPC Central Division in Paris has reached a different conclusion from that of the High Court of England and Wales[1] in its recent decision[2] regarding the importance of an expert witness statement in the determination of inventive step. In particular, this decision takes the view that an expert witness, though very knowledgeable on the subject area, may be too qualified to be considered as having the common general knowledge of the skilled person.
Facts of the case
The patent at suit was filed on 21 April 2011 and granted on 27 September 2023 by the European Patent Office. As well as filing a revocation action before the UPC, the Claimants also initiated opposition proceedings before the EPO. The Claimant challenged the validity of the patent on the grounds of added matter and lack of inventive step. Further, a counterclaim was also filed in response to an infringement action, where the counterclaimants raised grounds for invalidity corresponding to those raised by the Claimant in the revocation action.
During the revocation action, both parties introduced expert witnesses. In his expert statement, one of the expert witnesses, who was described as an inventor of over 100 patents for medical devices, asserted that the teaching of cited document ‘Zimmerling’ in combination with the common general knowledge of the skilled person directly and unambiguously leads to the claimed invention.
Common General Knowledge of the Skilled Person
The Central Division in Paris defined the skilled person as an individual who has no inventive imagination and skills, no ability for creative thinking, and is a captive of established prejudices in the relevant field, i.e. a legal fiction. Such a definition is in line with that typically used in European and UK practice.
In this instance, the Central Division disagreed that the expert opinion should be persuasive in illustrating the common general knowledge of the skilled person. Rather, the Division was of the opinion that the expert witness, having been an inventor of over 100 patents in the technical field, could not possibly meet the profile of the hypothetical skilled person, who must have no inventive imagination or skill and no ability for creative thinking. As such, the Division found that the common general knowledge of the skilled person could not include that which the expert alluded to in their statement, and that the claimed subject matter therefore possessed inventive step.
This judgement directly opposes the conclusion of the High Court of England and Wales, which attached great significance to the expert status in determining the state of the art and defining the common general knowledge of the skilled person.
What does this mean?
This decision may be considered to have lowered the threshold for inventive step, such that the common general knowledge of the skilled person encompasses less than originally thought. Further, it illustrates that expert opinions, while highly persuasive in other jurisdictions, may carry less weight before the UPC. However, this decision highlights a flaw in the use of expert witnesses to define the state of the art. Typically, individuals put forward as experts for providing evidence of the common general knowledge of the skilled person are highly educated and experienced individuals in the subject area. These qualifications may lend themselves to endowing a person with inventive imagination or skill and an ability for creative thinking, excluding that individual from being comparable to the hypothetical skilled person. It is respectfully suggested that using a highly qualified and experienced expert witness to give evidence as to whether or not something is inventive is doomed to failure for the reasons given by the Court. Such an expert is too smart and is possessed not only of the common general knowledge of the skilled person but also possesses the ability to draw together non-obvious teaching. They have inventive capability, so are wrong for the test/question put to them by the Paris Central Division in Advanced Bionics. They might be better placed to be asked, and give evidence as to, what the ordinarily skilled person would know, the expert being in possession of such knowledge, not what they would or would not have done with it. The latter is how expert witnesses are generally used in patent matters in the English Patent Court.
Notwithstanding the foregoing, expert witness opinions may still come in useful for explaining how a third party or Examiner may have misunderstood or misconstrued certain aspects of a complex prior art. Having an expert witness present during proceedings is also helpful to ensure that arguments presented and discussed are technically accurate, and to explain complex concepts if needed.
[1] [2022] EWHC 1345 (Pat).
[2] Advanced Bionics, UPC_CFI_338/2023, UPC_CFI_410/2023 (26 December 2024)