UPC CFI, LD Dusseldorf, 8 May 2025: Further invalidity objections are an amendment of the claim that may be late filed
14-08-2025 Print this page
Patent infringed (Article 25 UPCA) and valid (Article 65 UPCA). Claim interpretation of “Umschalten" (Article 69 EPC). The fact that the contested patent is also based on this understanding is already clear from the English version of the patent claim (which is not decisive for the scope of protection, however). Enabling disclosure (Article 83 EPC). That the patent specification learns nothing regarding the design of means for connecting, does not relate to the feasibility, but at most to the clarity of the claim [Article 84 EPC], which is not a ground for invalidity within the meaning of Art. 138 EPC. Novelty and prior art (Article 54 EPC). An invention is considered new if it differs from the prior art in at least one of its known features. Only that which is immediately apparent to a person skilled in the art from publication or prior use is considered to be prior art […. Findings which a skilled person only gains on the basis of further considerations or the use of further documents or uses are not prior art. Further invalidity objections – in terms of new prior art or new arguments based on already submitted prior art - introduced after the Counterclaim for revocation, constitute an amendment of the counterclaim for invalidity within the meaning of R. 263 RoP. (R. 9.2 RoP, R. 25 RoP, R. 29 RoP). Even if it can be assumed in favour of the defendant, even without an express request, that the introduction of further citations implicitly involves a request for the admission of the associated extension of the counterclaim for nullity, the defendant has not submitted any arguments which, according to R. 263(2) RoP could justify the admission of this extension of the counterclaim for annulment despite the delay. Decision of Chinese National Intellectual Property Office, in which a Chinese parallel patent was revoked on the grounds of lack of inventive step, disregarded as late filed (R. 9.2 RoP). Inventive step (Article 56 EPC). In general, a claimed solution is obvious if the skilled person, starting from the prior art, would be motivated to consider the claimed solution and, as a next step in developing the state of the art. On the other hand, it may be relevant whether the skilled person would have expected particular difficulties in carrying out the next step or steps. Depending on the facts and circumstances of the case, it may be permissible to combine disclosures from the prior art. A technical effect or advantage achieved by the claimed subject matter over the prior art may be an indication of inventive step. A feature arbitrarily selected from several possibilities cannot generally contribute to inventive step.
