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 Appeal

IPPT20251105, UPC CoA, Seoul Viosys v expert
Added matter (Article 138(1)(c) EPC, Article 123(2) EPC, Article 153(4) EPC). The court may, ex officio, find that the skilled person cannot derive a corresponding disclosure from the earlier application. This finding must be determined on the basis of the skilled person's understanding when reading the earlier application in its entirety. With a translation of an international application into one of the official languages of the EPO the applicant submits the application documents to the EPO in the language of the proceedings and it can be assumed prima facie that such a translation submitted by the patent applicant himself accurately reflects the content of the international application in the language of the application. Third parties and the court may, when assessing the inadmissible extension, rely prima facie on the translation of the application submitted by the patent proprietor to the EPO and published by it. If the patent proprietor claims that this translation is incorrect, he must prove the inaccuracy.

UPC Court of First Instance

IPPT20260123, UPC CFI LD Paris, Guardant Health v Sophia Genetics
Added Matter (Article 123 EPC). The patent and dependent Claims 2 to 14 of the patent are more likely than not to be invalid because of added-matter. The Court must ascertain what the skilled person would derive directly and unambiguously using their common general knowledge, as seen objectively with respect to the date of filing, from the whole PCT application as filed. On the basis of this, implicitly disclosed subject-matter shall also be considered as part of its content. However, 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. The invention as now worded in the granted Claim 1 cannot directly and unambiguously be derived from the patent as filed.

IPPT20260107, UPC CFI, CD Paris, Microsoft v Suinno 

European patent revoked (Article 65 UPCA)  Added subject matter (Article 138 EPC) .  Application to amend patent (Article 123 (2) EPC, Rule 30 RoP)

IPPT20250911, UPC CFI, LD The Hague, Washtower v Wasombouw
Patent more likely than not valid. No added matter (Article 123(2) EPC): The Court concurs with the reasoning adopted by the Board of Appeal of the EPO, finding that the retaining member is disclosed independently of the cover plate, both in the general description and in the original claim structure. 

IPPT20250801, UPC, CFI, LD Munich, Headwater v Samsung
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. 

IPPT20250730, UPC CFI, LD Düsseldorf, Headwater Research v Samsung Electronics
Added matter (Article 138(1)(c) EPC, Article 76 EPC, Article 123(2) EPC). The criterion to determine whether a divisional application extends beyond the content of the parent application is the same as the one applied to determine whether an application contains added subject-matter with respect to the application as originally filed. When the Court has to decide on the merits, as it is case in the present instance, the standard to be used for assessing the presence of added subject-matter is the criterion of “beyond (reasonable) doubt”. Features 1.5.1 and 1.5.3.1 (resp. feature 1.5.3.2) are not disclosed in the earlier application as originally filed because, according to this application, the processor determines whether a network service usage activity is running in the background (resp. foreground), instead of whether a (first) device application is running in the background (resp. foreground), as claimed. The Court also finds that there is no API blocking access (features 1.5.2, 1.5.3) disclosed based on the determination that the application is running in the background. 

IPPT20250710, UPC CFI, LD Hamburg, Nera Innovations v Xiaomi 
Added matter: inadmissible intermediate generalisation (Article 123(2) and (3) EPC) because the term ‘magnetic’ (as used in the application) has been omitted from the wording of the claim.

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 CFI, 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.