UPC CFI, CD Paris, 29 May 2025: Patent maintained - observations on non-compliance with the laws of physics and what drawings may disclose
19-08-2025 Print this page
Revocation action dismissed; patent maintained as amended by the First Auxiliary request (Article 65 UPCA).
Industrial applicability (Article 57 EPC) and insufficient disclosure (Article 83 EPC)(Article 138(1(a)(b) EPC). If an (alleged) invention would not comply with the generally accepted laws of physics falls within its scope because it cannot be used and therefore lacks industrial application. In such a situation, also the description would be insufficient to the extent that the applicant would not be able to describe how it could be made to work. claim 5 does not meet the criteria for industrial applicability under Articles 57 and 138 (1) (a) ‘EPC’ and must be considered as invalid. Since the application is addressed to the skilled person, it is neither necessary nor desirable to give details of well-known ancillary features. However, the description must disclose any feature essential for carrying out the invention in sufficient detail to make it apparent to the skilled person how to put the invention into practice without undue burden. (Article 83 EPC).
Application to amend the patent (R. 30 RoP). Auxiliary requests must be addressed in the order indicated by the defendant, in the absence of specific elements and/or requests suggesting otherwise.
Novelty – clearly integrally, directly and unambiguously disclosed (Article 54 EPC). An invention is to be considered part of the state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features. While drawings must always be used as explanatory aids for the interpretation of a patent claim, they cannot be used to extract a characteristic when definitively and unambiguously contradicted by the description and not supported by the claim.
Inventive step – non-obvious synergistic effect (Article 56 EPC). The combination of the use of only a compressed gas propellant with the clearance provided between the second piston and the container wall determines a synergistic effect of creating a sealant film on the container wall which reduces friction while maintaining a seal and mitigates the rapid pressure drop of the compressed gas during the expansion of the propellant chamber. This is not disclosed or rendered obvious by the claimant’s cited prior art documents.
