UPC CFI, CD Paris, 21 July 2025: No added matter nor intermediate generalisation
26-10-2025 Print this page
Revocation dismissed, maintained as granted (Article 65 UPCA).
Inadmissible newly raised arguments for lack of novelty of the independent claims and added subject-matter in the dependent claims (R. 44 RoP, R. 263 RoP).
The newly raised arguments do not follow the defence and there are no objective obstacles to their earlier presentation. Indicating in general terms that D2 will be used to challenge the patent's novelty or inventive step without providing a detailed analysis of the document with respect to novelty is insufficient to establish that this document is being used to challenge the patent's novelty.
Although the dependent claims are subordinated to the independent claims, the grounds for their revocation must be stated at the outset, as the latter form part of the overall challenge to the patent in its entirety.
Auxiliary requests included in Defence to revocation admissible (R. 30 RoP) even though the official electronic form (R. 4 RoP) was not used.
No stay of revocation action when a counterclaim for revocation in infringement action is filed after the oral hearing in the revocation action (R. 75.3 RoP).
Common general knowledge (‘CGK’) is subject to evidence and the burden lies with the party invoking it (Article 54 UPCA).
No added matter (Article 138(1)(c) EPC).
Strict compliance with the requirements of the gold standard in the context of the appraisal of added matter is of paramount importance for legal certainty. A patent proprietor should not be allowed to benefit from an unwarranted advantage by adding subject-matter not directly and unambiguously disclosed in the (earlier) application as filed, as third parties could then be confronted with claims extending beyond what they could legitimately expect when reviewing the original application.
When a plurality of features taken from unrelated embodiments or from various lists of features in an original disclosure need to be combined to arrive at a claimed subject-matter, there may be added matter, in the absence of a clear pointer to the specific combination in the original disclosure.
A prerequisite for any finding of added matter is that new technical information is presented to the skilled person.
Under the ‘EPC’ and the ‘UPCA’, there is no requirement for literal support in the earlier application as filed, […] if the wording has been slightly modified, [but] the technical meaning remains the same.
Added matter and intermediate generalisation.
Intermediate generalisation is justified only in the absence of any clearly recognisable functional or structural relationship among the (imported and omitted) features of the specific combination.
There is a so-called intermediate generalisation when a claimed subject-matter is obtained by importing one or more features from a certain embodiment in the original disclosure into a claim, while omitting one or more other features of this embodiment which were presented in combination with the imported feature(s) in the disclosure of this embodiment. An intermediate generalisation can be allowable or unallowable – in view of the prohibition of added matter – depending on the circumstances of the case.
A mere allegation that there is a functional or structural relationship is not enough for the Court to conclude that there is an unallowable intermediate generalisation. On the contrary, a concrete explanation of an alleged functional or structural relationship, based on the content of the original disclosure, would be necessary.
Inventive step (Article 56 EPC).
An assessment based on two different starting points is appropriate. No incentive or pointer in prior art for dramatic design change.
