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

UPC Court of Appeal

IPPT20250214, UPC CoA, Abbott v Sibio
Not more likely than not that the patent contains added matter (Article 138(c) EPC). In order to ascertain whether there is added matter, the Court must thus first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content. Where, as here, the patent is a divisional application, this requirement applies to each earlier application. The assessment of added matter cannot be restricted to only those parts of the original application which the patent proprietor indicated as a basis for an amended claim during the examination proceedings at the EPO, since a proper understanding of these parts also requires an assessment of their content in the context of the disclosure of the application as a whole. It is not required that a claim uses the exact same wording as used in the original application, as long as the skilled person would derive the combination of features from the whole application. 

UPC Court of First Instance

IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Insufficient disclosure of the claimed invention over the complete scope of the granted claims. (Article 83 EPC, Article 138(2) EPC). As the features of the claims define the “invention” considered under Art. 138(1)b) EPC, a technical effect is to be taken into account in assessing sufficiency only if it is explicitly claimed. 

IPPT20250117, UPC CFI, CD Paris, NJOY Netherlands v Juul Labs
Patent revoked because of ‘added matter (Article 65 UPCA)(Article 138(1)(c) EPC). It extends beyond the content of the European Patent Application as filed (MWE 3) and beyond the content of the parent application (MWE 4). Especially, MWE 3 and MWE 4 do not specify that the heater is attached to a first end of the fluid storage compartment (features 1.4 and 11.5) in the way as this term needs to be understood by way of claim interpretation and do not specify that the mouthpiece is attached to a second end of the fluid storage compartment (features 1.5 and 11.6) in the way as this term needs to be understood by way of claim interpretation. Any claim that refers to the heater being attached to a first end of the fluid storage department and the mouthpiece being attached to a second end of the fluid storage compartment while not defining, that the heater encloses the first end of the fluid storage compartment and the mouthpiece encloses the second end of the fluid storage compartment results in the skilled person being presented with information, which is not directly and unambiguously derivable from that application as filed (MWE 3) and which is not directly and unambiguously derivable from the parent application MWE 4.

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
No insufficient disclosure (Article 83 EPC, Article 138(1)(b) EPC). Embodiment construed by the Claimants is not part of the subject-matter of the patent. On that basis, the Claimants objections with regard to insufficiency of disclosure are moot. The skilled person is deemed to possess the relevant ‘CGK’ and use it by reading the patent and implementing the embodiments. Therefore, this teaching should be clear to the skilled person and enable him/her to produce embodiments with a disc-shaped magnet rotatable in the plane of the coil housing parallel to the patient’s skin (and to the magnetic field of the MRI machine). Hence, the patent fulfils the sufficiency requirements under Article 83 EPC.

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.