10x Genomics v Nanostring: How are Novelty and Inventive Step to be Assessed?

10x Genomics v Nanostring: How are novelty and inventive step to be assessed?
Should the patent claim be construed first?

First lessons from the UPC Court of Appeal

with Professor Peter Meier-Beck
Chaired by Professor Sir Robin Jacob (UCL IBIL)

About the Event

On 26 February 2024, the UPC Court of Appeal issued its first decision in which it overturned a first-instance preliminary injunction issued by the Court of First Instance (Munich Local Division). The patent in suit relates to a method for detecting a plurality of analytes in a cell or tissue sample and is one of the first patents with unitary effect, the grant of had only been published by the EPO on 7 June 2023. With the annulled decision, the Local Division had issued a preliminary injunction based on this patent for 17 UPCA member states. In its judgement, the patent was not only infringed but also more likely than not valid, and the balance of the parties’ interests weighed in favour of preliminary injunctive relief. The Court of Appeal overturned this decision. The decisive factor for this was a partially different interpretation of the patent claim and a quite different assessment of the inventive step.

How the patentability of an invention is examined and assessed is primarily determined in Europe by the case law of the EPO Boards of Appeal. However, national courts, in particular UK and German courts, have in some cases developed their own and differing standards. Against this background, the lecture will deal in particular with the question of how the Court of Appeal methodically approached the construction of the patent claim by the Local Division, the assessment of the novelty of the subject matter of this claim and the question of whether the invention was obvious to the skilled person.

The speaker

Peter Meier-Beck is a retired Presiding Judge of the Bundesgerichtshof, the German Federal Supreme Court. After serving as a judge at the Regional Court and the Higher Regional Court of Düsseldorf, Peter Meier-Beck was appointed Federal Judge in 2000. From 2010 to 2019, he chaired the 10th Civil Senate, i.e. the Patent Board, as Presiding Judge, and from 2019 until his retirement from office at the end of September 2021, he headed the Cartel Senate, i.e. the Competition Board.

Peter Meier-Beck has taught patent law since 1995. He was appointed Honorary Professor by Heinrich Heine University Düsseldorf in 2005 and by UCL’s Faculty of Laws in 2022.

Materials and recording