UPC CFI, LD Munich, 1 August 2025: omitting original claim features is adding matter
10-11-2025 Print this page
Patent revoked because claims 1, 2, 5, 6, 10 and 35 are invalid due to an extension of subject matter (Article 138(1)(c) EPC, Article 123(2) EPC).
On test for added matter UPC Court of Appeal, 14 February 2025, UPC_CoA_382/2024 (Abbott/Sibio),. [...] it follows from the above principles set out by the Court of Appeal that the content of an application must not be considered to be a reservoir from which features pertaining to separate embodiments of the application could be combined in order to artificially create a particular embodiment which has not so been disclosed in the application as filed.
This test essentially aligns with the long-standing case law of the EPO Boards of Appeal.
No added matter for the mere reason that the original claims have been replaced entirely by a new claim set which is not based on the original (independent) claims.
By omitting the feature of verifiability the claimed subject matter extends beyond the content of the application as filed.
Also the combination of features as claimed is not originally disclosed.
