UPC CFI, CD Paris, 7 January 2026: Added subject matter & application to amend patent
21-01-2026 Print this page
European patent revoked (Article 65 UPCA) Added subject matter (Article 138 EPC) .
The removal or replacement of a feature is not considered added-subject matter if the feature is not described as being essential in the application.
Any features which, even if mentioned throughout the application in the context of the invention, do not actually contribute to the solution of the technical problem are not essential features.
Feature 1.2 : using several techniques of location simultaneously is not provided by the application which discloses the use of a single technique at a time , but not the three techniques or two of them at the same time.
Feature 1.4 : ranking involves a comparison between time-dependent and time-independent click-through rates , is not disclosed by the content of the application. The application only discloses that click through rates may be stored as a function of the location or the time of the query and, thus, not as a factor which is independent of these criteria.
Inventive Step (Article 56 EPC)
For completeness claim 1 also lacks inventive step in view of the document ’BP07’ completed with the teaching of the document BP08’.
Application to amend patent (Article 123 (2) EPC, Rule 30 RoP) .
Auxiliary Requests II – XVII not admissible as they not compliant with the requirements of Rule 30 (1) 'RoP' and don't enable the Court to unambiguously understand the scope of the proposed amendments.
The Auxiliary Request is unable to remedy the detected defect, the patent remains invalid even in the formulation proposed by the Auxiliary Request.
The defendant in a counterclaim for revocation is entitled to amend the patent, provided the relevant application is included in the statement of defence (or meets the filing deadline for this application) and contains the information referred to in Rule 30 ‘RoP’. This includes the language of the application, an indication of whether the amendments are conditional or unconditional, and an explanation of how the amendments comply with Articles 84 and 123 (2) (3) ‘EPC’ and why the proposed amended claims are valid.
Rule 30 (1) (c) RoP also requires that the proposed amendments must be reasonable in number in the circumstances of the case. Requirements objective in character: the deadline within which the application must be filed, must contain at least one amendment, and that the same (or the same amendments) must be formulated in the language of the patent . Conversely, matters of judicial discretion are the assessment of clarity, sufficiency of the explanation regarding validity and infringement, and the reasonableness of the number of amendments. Necessity for consolidated documents where the proposed amendments have a significant impact on the patent.
A request for the deletion of one or more claims may not require the concurrent submission of a document containing the full set of the claims.
Content of the patent is the responsibility of the applicant, no manipulative intervention by the Court is permitted, or, no assistance may be provided by the Court to the party in producing a clear and intelligible draft .
