UPC CFI CD Paris, 29 July 2024: Claim 1 of EP ‘708 maintained as amended by auxiliary request II

Claim 1 of EP ‘708 maintained as amended by auxiliary request II. 

Partial inadmissibility of request to amend patent (Rule 30 RoP, Rule 50 RoP). 

It must be clarified that if […] a request for patent amendment also concerns nonchallenged claims, such request will not be considered entirely inadmissible, as argued by the claimant, but will instead be considered admissible, and addressed, only with regard to the challenged claims. Furthermore […] the patent proprietor is entitled to propose amendments to the challenged claims also by inserting features, omitted in the original claims, mentioned in the non-attacked claims. 

Inadmissible late-filed grounds for invalidity (Rule 44 RoP, Rule 30 RoP). 

New grounds for invalidity (novelty and lack of inventive step) raised in Reply to defence to revocation and Defence to the application to amend the patent, not submitted in the statement for revocation and which did not relate to the amended version of the patent are inadmissible as they are not permitted by the Rules of Procedure and, in general, are contrary to the front-loaded character of the ‘UPC’ proceedings. 

No added subject matter by amending “at least one” into “a plurality” (Article 123(2) EPC). 

This amendment is supported by the application as originally filed in original claim 1 (‘at least one…’), paras. 28 and 37 and figure 1 of the application as originally filed. It should also be noted that the expression ‘at least one’ comprises ‘a plurality’, as it means one or more. 

Enabling disclosure of a “user induced event” (Article 83 EPC) in view of what the description teaches and provides as examples and of what is general common knowledge. 

No lack of clarity of the term “temperatures” (Article 84 EPC). 

A person of ordinary skill in the art, applying a natural reading to the phrase ‘a plurality of sensors to monitor temperatures’, would understand this to mean a plurality of environmental sensors, each monitoring temperature. This conclusion is supported by the general meaning of the expression in question, as well as by para. [0011] and Fig. 2. 

Auxiliary request II. No lack of inventive step (Article 56 EPC). 

The teachings contained in these prior art documents do not provide any motivation to solve the technical problem by adjusting the sampling rate based on at least one of the environmental altering events and the user induced event and, therefore, to change the energy-intensive process step of transmitting data to the controller on the basis of changing needs. 

Additionally, it should be noted that, according to Article 56 ‘EPC’, the state of the art relevant for the assessment of the inventive step does not include the content of European patent applications as filed if their dates of filing are prior to the date of filing of a European patent but their dates of publication are on or after that date.

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation