[Guest Post] Computer Implemented Inventions at the UPC - Guidance for a common path

Katfriend Greg Corcoran returns to IPKat with an analysis of computer implemented inventions at the UPC and how this may influence the UK approach. Over to Greg:

How does the Unified Patent Court (UPC) handle inventions featuring excluded subject matter? The UPC Court of Appeal (CoA) explained how it does so in its decision of 17^th April 2026, Abbott Diabetes Care Inc. v Sinocare Inc. & anor UPC_CoA_901/2025. Following the UK Supreme Court’s (SC) recent decision Emotional Perception AI Limited (Appellant) v Comptroller General of Patents, Designs and Trade Marks (Respondent) UKSC/2024/0131 (reported on IPKat here) on this same legal matter in which the SC applied  G1/19  (Pedestrian simulation) and Duns, T 154/04, the UKIPO ‘confirmed it will align examination practices with the European Patent Office approach endorsed by the SC’, Policy Update of UKIPO’s IP Connect 26 February 2026. In following the SC’s direction to develop its own practice could the UKIPO draw inspiration and even guidance from the CoA’s approach?

Reminder of COMVIK and G1/19

In G1/19 the Enlarged Board of Appeal of the EPO (EBA) approved the “any hardware” approach (G1/19 reason 28): if the subject matter of the claim features hardware, then Article 52(2) EPC is inapplicable.

The EBA also affirmed COMVIK T641/00, a keystone case law of the EBA relating to excluded subject matter.  In assessing the inventive step of an invention with mixed technical and non-technical features, the assessment should account for all features of the invention that contribute to its technical character.  The interrelationship and functioning of the claim features must be assessed together and considered for assessing the presence of an inventive step. Features that make no such contribution cannot be considered in this assessment even if such features are technical. Therefore, a non-technical feature as such may contribute to the technical character of the claimed invention as a whole by its interaction with the other claim features.  The reasoning of COMVIK is formulated as a problem solution approach.

Reminder of Emotional Perception

Emotional Perception brought the UK law closer to practice at the EPO.  It accepted the any hardware test and the principles of COMVIK, but as affirmed in seven principles set out in Duns, T 154/04. There is a limit to adoption of the EPO’s approach (paragraph 96):  following Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15, the problem-solution approach is a matter of EPO practice rather than mandated by the EPC. So instead, the SC approved the existing UK approach to inventive step, Pozzoli SpA v BDMO SA [2007] EWCA Civ 588; [2007] FSR 37 (See Emotional Perception paragraphs 33 and 65).

The SC set out three steps when addressing the patentability of excluded subject matter:

1. apply the ‘any hardware’ test;

2. assess a new ‘intermediate test’ distilled from COMVIK and Duns to identify claim features which contribute to the overall technical character whether or not the features themselves individually taken relate to excluded subject matter; and then 

3. assess inventive step, applying Pozzoli.

However, the SC refrained from providing guidance on how to assess steps 2 and 3, the intermediate step and inventive step of this framework for the risk of creating binding precedent. Instead, the SC reverted proceedings to the UKIPO where development of new practice has now started (paragraphs 117 & 118 Emotional Perception). 

UK practice lacks established guidance on how to apply the last two of its new three step test. The UKIPO has indicated, not just that one of its sources will be EPO practice, but it will align examination approaches so far as endorsed by the SC (Policy Update of UKIPO’s IP Connect 26 February 2026).  Has the CoA provided any helpful guidance and suggestions to the UKIPO in Abbott v Sinocare

Abbott v Sinocare – Court of Appeal

The panel of the CoA featured judges from Germany, France and the Netherlands - representing a broad range of legal traditions in approach to the patentability of excluded subject matter. 

The CoA decision was an appeal of a decision of the Hague local division (UPC_CFI_587/2025; 22 October 2025).  The proceedings relate to an invention about on-body insulin administration, featuring a display of real-time patient data on a mobile device for the patient to monitor their own insulin levels. 

The Court of First Instance (CFI) at the Hague determined the relevant person skilled in the art (PSA) to be ‘a software engineer or user interface designer … with common general knowledge in … in the field of display of information’ (paragraph 34, CFI).  The CFI had flagged that the invention relates to excluded subject matter in relating to a presentation of information and a computer implemented invention, Art 52(2)(c),(d) EPC. The CFI decided that the claimed invention is a glucose monitoring system which assists the user in diabetes management and glycaemic control and method of glucose monitoring, see paragraph of the patent in suit EP3988471B1 (paragraph 33) using a graphical user interface (GUI), (paragraph 94). Yet the CFI did not consider validity arguments because it found there was no infringement. Consequently, the CFI did not consider the question of the patentability of excluded subject matter.

Inventive Step – Identifying the Problem

The CoA affirmed the finding of the CFI relating to the PSA and that the invention featured excluded subject matter (paragraphs 32 & 34, CoA). The CoA applied the UPC’s own ‘holistic’ approach to inventive step, as set out in Amgen v Sanofi/Regeneron  UPC_CoA_528/2024 and UPC_CoA_529/2024 of 25 November 2025 and Meril v Edwards UPC_CoA 646/2024, 25 November 2025 (paragraphs 90 to 93).  The holistic approach differs from the EPO’s problem-solution approach in considering the problem is an ‘objective technical problem’ which is determined from the overall disclosure of the application as-filed (which is derived from paragraph 94 of G2/21; paragraph 143, Meril v Edwards)

The CoA set out the objective technical problem of the claimed invention ‘to provide a display or user interface that allows an improved human-machine interaction and facilitates a user’s diabetes management’.  It assessed the contribution of the patented invention to be ‘the provision of a display that allows an improved human-machine interaction to assist the user in their glucose management, in particular by providing a real-time link between the monitored glucose levels and the reported events which is easy to access and to understand and facilitates the user’s diabetes management … ‘

The CoA selected Saffer, one of several identified prior art documents as an initial starting point.  It identified claimed features Saffer omits including feature 1.13, relating to the dynamic display of information in chart on display of a unit (paragraph 110).  It disagreed with the respondent that the characteristics and functionality of these identified features, e.g. of group 1.13, were non-technical and so could not provide a basis of determination of an inventive step for the claimed invention and that, considering these features, the claims lacked an inventive step (paragraph 111).

The CoA decided that the patentability of the claimed invention turns on, ostensibly, a non-technical feature 1.13.  It held that the unit of item 1.13 could be a mobile phone (paragraph 40) as per alleged infringement (paragraphs 58 & 69).

The Intermediate Step – Assessment of Excluded Subject Matter:

As the claim has non-technical features, the CoA applied G1/19 and COMVIK: such a feature should not be excluded from the assessment of inventive step merely because it is a non-technical … [and]…  on its own, would be considered a “non-invention” under Art. 52(2) EPC. A feature that is non-technical as such may still contribute to the technical character of the claimed invention as a whole by its interaction with the other claim features. Therefore, the interrelationship and functioning of the claim features must be assessed together (paragraph 112). 

The SC referred to this assessment as the ‘intermediate step’.

In context, the CoA decided the claimed invention is technical because it provides ‘… improved user-machine interaction that facilitates the user’s diabetes management and glycemic control’. It decided this is clearly a technical contribution (paragraph 113); and it considered that even if all the measures of a feature were non-technical as such it “… may still contribute to the technical character of the claimed invention as a whole by its interaction with the other claim features. … [T]he interrelationship and functioning of the claim features must be assessed together’ (COMVIK; G1/19) (paragraph 112).  The CoA considered all these technical measures to result in the technical effect of improved assistance to the user’s diabetes control by providing easily accessible means to identify the effect of certain events on the monitored glucose levels. (paragraph 114)

Because these measures were assessed to contribute to the technical character of the invention the CoA decided they should all be considered when assessing inventive step (paragraph 114), even if these features could be considered non-technical in themselves.

Inventive Step – the Assessment

Following its assessment of the intermediate step, the CoA determined whether the claimed invention has an inventive step.  Various combinations of prior art were considered.  Starting with Saffer, the document it used initially to identify the new features of the claimed invention, the CoA considered its combinations with three other documents in turn: Stocker (paragraphs 119 to 128), Matian (paragraphs 130 to 138), and Schwartz (paragraphs 139 to 145).  The CoA also considered two other starting points which appear to be public prior use disclosures, Dexcom Seven Plus with its user guide, considered with three different documents in turn; paragraphs 146 to 150) and Guardian Real-Time (paragraphs 151 and 152).   The court decided all of these arguments fail.  The invention had an inventive step and was found valid.

Value of the Decision as Precedent

Could this decision, despite being a decision for a preliminary injunction (PI) rather than a decision on the merits, set precedent?  In a PI decision, the court need only base its decision on considering the balance of probabilities’.  For example, a court that decides not to grant the PI because of the validity of the patent would consider ‘on the balance of probabilities to be more likely than not that the patent is invalid’ (Nanostring v 10x Genomics UPC_CoA_335/2023; 26 February 2024).  This is a lower standard than a decision on the merits applicable for a permanent injunction.  Thus, a later decision on the merits that is inconsistent with this PI decision would overrule it.    

Yet, the first substantive decision of the CoA (10x Genomics UPC_CoA_335/2023) is treated as precedential despite being a PI decision in that it was later affirmed in decisions on the merits. In addition, the court set out the court’s reasoning with more care and detail than may have been required for a PI decision. 

Digital display

The CoA, in considering seven different prior art combinations in its recent decision, appears to have set out its reasoning carefully and to have gone beyond what would usually be required in making its decision for PI proceedings: This CoA decision is also the first UPC decision relating the substantive legal subject of the patentability of excluded subject matter including computer implemented invention.   This recent CoA decision draws parallels with 10x Genomics in 2024.

Therefore, the recent CoA decision could become leading UPC case law, for the assessment of patentability of excluded subject matter.   Whether it is referred to in later UPC decisions on the merits will be watched.  Nevertheless, until there is a decision on the merits, the CoA’s decision is informative and provides useful guidance about assessment of patentability of mixed inventions at the UPC.

Parallels for the UK

The CoA applied similar steps to those proposed by the SC in Emotional Perception:

• apply the ‘any hardware’ test;
• assess the ‘intermediate step’ to identify claim features which contribute to the overall technical character whether or not the features themselves individually taken relate to excluded subject matter; and
• assess inventive step using its own test (i.e. the holistic test for the UPC).

As a final wrinkle, the CoA expressly assessed the intermediate step after, rather than before, it applied the first step of its holistic test in identifying the objective technical problem.  Yet after reversion of the patent application of Emotional Perception to examination at the UKIPO, the UK Examiner applied both approaches:  applying the intermediate step before assessing inventive step and after starting assessing inventive step (see paragraphs 19, 22 and 51 to 53 of the Examination Report of 27 March 2026 at the UKIPO).  At present, the order in which the tests should be applied seems to be undecided in UK practice.
Summary

The framework that the CoA applied in assessing the patentability of excluded subject matter has similarities with the SC’s Emotional Perception decision, without complying with, and rigidly adhering to, EPO practice.  That the CoA applied its own test for inventive step, not the problem-solution-approach, maps a way for the UKIPO to apply its own way of assessing inventive step, i.e. Pozzoli. The care with which the CoA seems to have prepared its decision may point to its awareness that its decisions could be taken into account not just by the UPC but also by foreign venues such as those in the UK. 

It will be interesting to see if and how the UKIPO and later the UK courts note this UPC decision and the UPC’s consequential case law, as it finds its own path on excluded subject matter post Emotional Perception. 

The CoA decision suggests harmonisation is inexorable, although on reflection it need not be inevitable.  Nonetheless, the legal landscape in Europe shows more signs of convergence.

Further reading

• [Guest Post] UK Assessment of Computer Implemented Inventions moves closer to EPO Practice - but by how far? (Emotional perception [2026] UKSC 3) - The IPKat)