Article 138

1. Subject to Article 139, a European patent may be revoked with effect for a Contracting State only on the grounds that:
a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
c) the subject-matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed;
d) the protection conferred by the European patent has been extended; or
e) the proprietor of the European patent is not entitled under Article 60, paragraph 1.

2. If the grounds for revocation affect the European patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part.

3. In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings.

Case Law UPC

IPPT20241211, UPC CFI, LD Paris, DexCom v Abbott
EP 282 revoked (Article 138(1)(c) EPC, Article 65(2) UPCA). Inadmissible new added matter ground for revocation raised in Rejoinder to the reply to the Statement of Defence inadmissible (R. 9.2 RoP). Added matter auxiliary requests (Article 138(1)(c) EPC) claim 1 according to the auxiliary requests extends the subject-matter of the European patent beyond the content of the earlier application as filed. “Whole-content approach” must be adopted in the present case to determine added matter. Question to be addressed is whether the skilled person considering claim 1 would be confronted with new technical information based on what was derivable, directly and unambiguously, from the whole contents of the description, claims and figures of WO 631.

IPPT20241122, UPC CFI, LD Mannheim, Panasonic v Guangdong OPPO
Given the interpretation of the patent claim (Article 69 EPC): The invention is sufficiently disclosed (Article 138(1)(b) EPC). 

IPPT20241105, UPC CFI, CD Paris, NJOY v Juul - I
EP 115 revoked. Added subject matter (Article 138(1)(c) EPC): No parts of the disclosure that would show the skilled person a preferred embodiment, in which the mouthpiece is affixed to a second end of the fluid storage compartment without enclosing the fluid storage compartment.

IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
Strong rebuttable presumption that the registered patent proprietor is the material patent proprietor entitled to bring actions (Article 47(1) UPCA, Article 138(1)(e) EPC). In PI proceedings – in which only a “sufficient degree of certainty that the applicant is entitled to commence proceedings pursuant to article 47 UPCA” is required (R. 211(2) RoP) – this presumption can only be rebutted if the title is manifestly erroneous. At least not more likely than not that the patent is invalid on the basis of Article 138(1)(e) EPC: 

IPPT20240704, UPC CFI, LD Paris, DexCom v Abbott 
 Added subject-matter ((article 138(1)(c) EPC). No added subject matter: Omitting from claim 1 as granted features related to estimated analyte values allowable because the skilled person understands that the steps of calculating and transmitting estimated analyte values are distinct from receiving and sending portions of the data indicative of analyte levels. Added subject-matter in Auxiliary request 2:  there is no basis for a broadening or a generalisation to any use of the second protocol that would be suitable for achieving the effect of facilitating pairing.

IPPT20240619, UPC CFI, LD The Hague, Abbott v Sibio – EP283
Added matter under the so-called “gold standard” disclosure test of the Boards of Appeal of the EPO (article 138(1)(c) EPC). The Court applies the so-called “gold standard” disclosure test of the Boards of Appeal of the EPO for added matter (article 138(1)(c) EPC) which is also the standard used in many Contracting Member States of the UPC. Claim 1 appears to be the result of an unallowable intermediate generalization, at least relating to the omission of the presence of an elastomeric seal in the recess of the base portion of the enclosure (in feature 1.4). For intermediate generalization to be considered allowable (in the sense that it does not result in added matter), it should be (clearly) established that there is no structural and functional relationship between the omitted feature and the other features incorporated into the claim.