UPC CFI, LD Düsseldorf, 28 January 2025: Possible cross border infringement jurisdiction for the UK - patent revoked for UPC member states
22-02-2025 Print this page
Patent revoked in the territory of all Contracting Member States in which the patent has effect (Article 65 UPCA).
Insufficient disclosure of the claimed invention over the complete scope of the granted claims. (Article 83 EPC, Article 138(2) EPC). As the features of the claims define the “invention” considered under Art. 138(1)b) EPC, a technical effect is to be taken into account in assessing sufficiency only if it is explicitly claimed.
Cross border jurisdiction UPC over defendant domiciled in UPC Contracting Member State regarding infringement of UK part of a European patent (R. 20 RoP, Article 4 Brussels Regulation, Article 24 Brussels Regulation). This also applies if the defendant has filed a counterclaim for revocation in respect of the German part of the patent in suit. Even then, as regards the infringement action concerning the United Kingdom, the Unified Patent Court has jurisdiction to hear the case.
Claim interpretation (Article 69 EPC, Protocol). The terms used in a claim should be given their broadest technically sensible meaning in the context of the claim in which they appear. A narrowing interpretation of the claims (“Auslegung unterhalb des Wortlauts”) based on the description or drawings should generally not be permitted. convincing reasons based on the circumstances of the individual case in question required.
Novelty-destroying Implicit disclosure (Article 54(1) EPC). Implicit disclosure means no more than the clear, immediate and unambiguous consequence of what is explicitly mentioned. An alleged prior art disclosure of a feature can be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed. "Implicit disclosure", however, does not only mean information that the skilled person can unequivocally derive from a cited document in addition to what is explicitly described therein. [...] , “implicit disclosure” means any feature which a person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws. A feature is also implicitly disclosed if, in carrying out the teaching of a prior-art document, the skilled person would inevitably arrive at a result falling within the terms of a claim.
Added matter (Art. 123(2) EPC). The correct question to be asked when evaluating compliance with Art. 123(2) EPC is whether the subject-matter of an amended claim is directly and unambiguously taught to the skilled person by the original application. A direct teaching requires that the subject-matter is originally taught as specific, clearly defined and recognizable individual embodiment, either explicitly or implicitly, without the necessity of applying any deductive skills. The correct question to be asked is therefore not whether a skilled person would merely consider the subject-matter of an amended claim as falling within the scope of an originally disclosed broader teaching, but whether the skilled person would immediately and without any doubt understand that said subject-matter of an amended claim is a specific, individualized embodiment which is also originally disclosed as such.
