UPC COA, 29 December 2025 : Late filed new grounds for invalidity , inventive step
27-01-2026 Print this page
Appeal rejected: patent revocation upheld.
Late filed new grounds for invalidity in first instance Defence to application to amend . (Rule 32 RoP, Rule. 263 RoP) .
Defence to the Application to amend the patent does not provide an opportunity to introduce new grounds of invalidity in relation to the patent, such as new prior art considered - either novelty destroying or, convincing starting points for the assessment of lack of inventive step, unless leave to amend the case is granted .
Specific new arguments may be admitted into the proceedings in consideration of specific circumstances of the case.
An overly strict application is contradicted by R. 44 RoP requiring an “indication” of the facts relied on.
“Fairness” may require that the claimant in an action for revocation be allowed to introduce new facts and evidence in response to the Statement of defence. This may include evidence to prove a point already made by the claimant on the common general knowledge of the skilled person, or to rebut evidence brought forward by the defendant on this point.
Inventive step (Article 56 EPC) Is to be established in accordance with the Sanofi V Amgen decision .
The objective problem must be assessed by establishing what the invention adds to the state of the art, not just by looking at the individual features of the claim, but by comparing the claim as a whole and considering the inventive concept underlying the invention.
The objective problem should not contain pointers to the claimed solution .
The objective technical problem is limited to “providing a vaporizer that facilitates checking the status of the inserted cartomizer”. And not ‘facilitating to check the status of the battery electrical contacts’ as suggested by VMR Products.
The invention in prior art “Pan” is a realistic starting point for an inventive step analysis - it belongs to the same field of technology and discloses several features similar to those relevant to the invention.
