Article 123

1. The European patent application or European patent may be amended in proceedings before the European Patent Office, in accordance with the Implementing Regulations. In any event, the applicant shall be given at least one opportunity to amend the application of his own volition.

2. The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.

3. The European patent may not be amended in such a way as to extend the protection it confers.

UPC Case Law

UPC Court of First Instance

IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Added matter (Art. 123(2) EPC). The correct question to be asked when evaluating compliance with Art. 123(2) EPC is whether the subject-matter of an amended claim is directly and unambiguously taught to the skilled person by the original application. A direct teaching requires that the subject-matter is originally taught as specific, clearly defined and recognizable individual embodiment, either explicitly or implicitly, without the necessity of applying any deductive skills. The correct question to be asked is therefore not whether a skilled person would merely consider the subject-matter of an amended claim as falling within the scope of an originally disclosed broader teaching, but whether the skilled person would immediately and without any doubt understand that said subject-matter of an amended claim is a specific, individualized embodiment which is also originally disclosed as such.

IPPT20250115, UPC CFI, LD Vienna, Swarco v Strabag
Invalidity objection (added-matter, Article 123(2) EPC)) not addressed in terms of content since no counterclaim for revocation was filed (R. 25 RoP, R. 42 RoP). 

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Added matter – impermissible generalization (Article 123(2) EPC). There is no indication in para. [0010] or in the application as a whole that indicates that the implantable system could be any other type of implant system as those specifically mentioned, and in the view of the panel this is not directly and unambiguously derivable for the person skilled in the art from the content of the application as filed using common general knowledge. The omission of the exhaustive list of para. [0010] of the application resulted therefore in an impermissible generalization of the claimed invention. Thus, the patent as granted contains added subject matter and does not fulfil the requirements of Art. 123(2) ‘EPC’. 

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
No added matter (Article 123(2) EPC): the sentence in para. [0003] discloses a variant including only features A and C (and not B). Therefore, feature 1.5 of claim 1 – including features A and C – is supported by the description of the application as filed.

IPPT20241122, UPC LD The Hague, Plant-e v Arkyne
No added matter (Article 123(2) EPC). The “gold standard” disclosure test is also to be applied […]. 

IPPT20240729, UPC CFI, CD Paris, Bitzer v Carrier Corporation
No added subject matter by amending “at least one” into “a plurality” (Article 123(2) EPC). This amendment is supported by the application as originally filed in original claim 1 (‘at least one…’), paras. 28 and 37 and figure 1 of the application as originally filed. It should also be noted that the expression ‘at least one’ comprises ‘a plurality’, as it means one or more. 

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences
Auxiliary request II - priority right not validly claimed (Article 87 EPC, Article 4 Paris Convention). Rebuttable presumption of the entitlement to priority in favour of the subsequent applicant, provided the latter can demonstrate the acquisition of the right to the title. Later application does not cover the "same invention". Novelty (Article 54 EPC). The wording of ‘Levi’'s claims and description does not disclose this feature [1.5]. Additionally, contrary to the claimant's argument, the drawings are not conclusive. Novel in view of ‘Benichou’: claims and description do not disclose a frame made entirely of hexagonal cells, nor do they mention the types of struts which form the cells. […]. Additionally, the figures lack a clear depiction of side struts. Novel in view of ‘Dimatteo’:  person skilled in the art would understand that 'Dimatteo' discloses […] a venous valve rather than a heart valve. Novel in view of ‘Harition’: does not disclose either that the frame comprises hexagonal cells or that it is made up entirely of hexagonal cells.  […] It is clear from this figure [27] that feature (1.5) cannot be derived directly and unambiguously from ‘Hariton’. Inventive step. Technical effect Auxiliairy request II (Article 56 EPC): Burden of proof: The party asserting the invalidity of the patent must prove the relevant constituent facts in order to rebut the presumption of validity accorded to the granted patent. It is necessary to determine whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is assessed in terms of the specific problem encountered by the person skilled in the art. Problem-solution-approach does not appear to mandatory. Regardless, applying the “problem-solution approach” to the present proceedings would not lead to a different conclusion.