Article 54

1. An invention shall be considered to be new if it does not form part of the state of the art.

2. The state of the art shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application.

3. Additionally, the content of European patent applications as filed, the dates of filing  of which are prior to the date referred to in paragraph 2 and which were published on or after that date, shall be considered as comprised in the state of the art.

4. Paragraphs 2 and 3 shall not exclude the patentability of any substance or composition, comprised in the state of the art, for use in a method referred to in Article 53(c), provided that its use for any such method is not comprised in the state of the art.

5. Paragraphs 2 and 3 shall also not exclude the patentability of any substance or composition referred to in paragraph 4 for any specific use in a method referred to in Article 53(c), provided that such use is not comprised in the state of the art.

UPC Case Law

Court of Appeal

IPPT20260217, UPC CoA, Rematec v Europe Forestry
Novelty (Article 54 EPC). D3 does not disclose feature 1d: In the mills shown in the aforementioned Figures 3 and 8, the feed-in and/or discharge takes place rather in a tangential direction than in a radial direction, and thus not in an essentially radial direction.

IPPT20251125, UPC CoA, Meril v Edwards
Novelty and added matter are distinct legal concepts and are not governed by identical requirements (Article 54 EPC, Article 138(1)(c) EPC. As a general rule, a specific disclosure, such as a disclosure of the combination of features A and B, takes away the novelty of a more general patent claim claiming feature A as such. In contrast, a patent claim claiming feature A as such may extend beyond a more specific disclosure of the combination of A and B in the application. 

IPPT20250214, UPC CoA, Abbott v Sibio

Novelty destroying: apparent without using inventive skills (Article 54 EPC). Not substantiated and it is not otherwise apparent why (which pointers) and how the skilled person, even if combining CA009 with US440, would arrive at claim 1 of the patent, without using inventive skills.

IPPT20250304, UPC CoA, Sumi Agro v Syngenta
Provisional injunction confirmed. More likely than not that the patent is valid. Sumi Agro’s novelty attack fails because it relies on the presence of common general knowledge with the person skilled in the art that rapeseed oil may include a small amount (up to 2 %) of FFA, which has not been demonstrated, (Article 54 EPC). 

IPPT20240925, UPC CoA, Mammut v Ortovox
Assessment of novelty within the meaning of Art. 54(1) EPC requires the determination of the entire content of the prior publication. It is relevant whether the subject-matter of the patent-in-suit is directly and unambiguously disclosed in the citation with all its features.

Court of First Instance

IPPT20260303, UPC CFI, LD The Hague, ABM v Philips
Counterclaim action successful. Patent revoked in entirety for lack of novelty. (Article 54 EPC , Rule 25 RoP). The patent lacks novelty as Claim 1 of the patent is fully anticipated by prior art (JP748). Claim 1 of the Auxilliary Request is obvious, starting from the same prior art. The unamended dependent claims, cannot change this.  

IPPT20251127, UPC CFI, CD Milan, Pai Pharma v Philips
Novelty (Article 54 EPC). The skilled person will generally not (directly and unambiguously) deduce dimensions from schematic figures. 

IPPT20251105, UPC CFI, LD Hamburg, Dolle v Farko
Counterclaim for revocation unsuccessful, patent valid and infringed (Article 25 UPCA, Rule 25 RoP).  The patent is novel over late filed prior art documents (Annexes NK 22 and 23) (Article 54 EPC) . Which were submitted after the expiration of the deadline. The expansion of the revocation claim to include late filed prior art documents constitutes an amendment under Rule 263 RoP. The burden of proof that neither the requirements of Rule 263(1) RoP nor the grounds for exclusion under Rule 263(2) RoP are met lies with the applicant. Based on this, there are doubts as to whether the defendants’ submissions justify the admission of this extension of the counterclaim despite the delay. 

IPPT20250822, UPC CFI, LD Munich, Brita v Aquashield
Given the purpose specified in the claim the only relevant factor for the novelty test is whether a device with the spatial physical characteristics as required by the contested patent for the valve actuating device is already disclosed in the prior art (Article 54(1) EPC). If this is the case, the device is disclosed ‘as such’, regardless of its intended use. The only exception to this is if the device disclosed as such with all its spatial and physical features is unsuitable for the intended purpose of the contested patent or requires modification in order to be used for this purpose. 

IPPT20250728, UPC CFI, CD Paris, Essetre Holding
Novelty standard (Article 54(1) EPC). An invention is to be considered part of the state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features.

IPPT2025016, UPC CFI, LD Hamburg, Steros v Otec
PI granted. Sufficient degree of certainty regarding the validity of the patent in suit (Article 65 UPCA, R. 209 RoP). Decisions of other European Courts or decisions of the EPO concerning the same patent do not bind the Court but may provide helpful indications that the Court may take into account. Defendant was unable to demonstrate that feature group 1.1 was directly and unambiguously disclosed by the public prior use (Article 54 EPC). It can be noted that the attacked embodiment and the alleged prior use differ in their composition, so that no conclusion can be drawn regarding the measurements of the attacked embodiment with regard to the public prior use. 

IPPT20250529, UPC CFI, CD Paris, Lindal v Rocep-Lusol
Novelty – clearly integrally, directly and unambiguously disclosed (Article 54 EPC). An invention is to be considered part of the state of the art when it is found clearly integrally, directly and unambiguously in one single piece of prior art and it is identical in its constitutive elements, in the same form, with the same arrangement and the same features. While drawings must always be used as explanatory aids for the interpretation of a patent claim, they cannot be used to extract a characteristic when definitively and unambiguously contradicted by the description and not supported by the claim. 

IPPT20250513, UPC CFI, LD Düsseldorf, Sanofi v Amgen

Fictional novelty of (first and second) medical use claims (Article 54(4)(5) EPC). Medical use claims constitute an exception to the “normal” rules on novelty and provide a “notional novelty” by virtue of a legal fiction for substances or compositions for a specific (new) use that were already part of the prior art. Absent these provisions, a prior art disclosure of a substance would in principle be novelty destroying for a claim relating to said substance for a new use. The term “for use in”, as such, in a patent claim would normally be interpreted as the claimed product being “suitable for” the claimed use, but the scope of that claim would not be limited to said use. For (second) medical use claims, the novelty is not derived from the claimed substance or composition as such but from the claimed therapeutic use. In the case of a second medical use, a substance or composition within the meaning of Art. 54(4) EPC (for a use in a treating method = first medical use) is used for any specific use which is not comprised in the state of the art. Such a new therapeutic use can be a new indication, e.g. a disease not yet treated by the claimed substance, or an indication for a new group of patients. In order to benefit from the notional novelty afforded by Art. 54(5) EPC, second medical claims must relate to a specific use in a method according to Art. 53(c) EPC. 

IPPT20250508, UPC CFI, LD Düsseldorf, Grundfos v Hefei

Novelty and prior art (Article 54 EPC). An invention is considered new if it differs from the prior art in at least one of its known features. Only that which is immediately apparent to a person skilled in the art from publication or prior use is considered to be prior art […. Findings which a skilled person only gains on the basis of further considerations or the use of further documents or uses are not prior art. 

IPPT20250410, UPC CFI, LD Düsseldorf, Yellow Sphere v Tabbert

Standard for assessing novelty (Article 54 EPC): A technical teaching is new if it differs from the prior art.  Findings which a skilled person only gains on the basis of further considerations or the use of further documents or uses are not prior art. 

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - II

No novelty destroying public prior use (Article 54 EPC). Facts – that need to presented in Statement of Defence and Counterclaim for Revocation – are insufficient to substantiate public prior use. Allegations and documents show that before the relevant priority date such plates had been protected by an at least implicit confidentiality regime. No disclosure of feature 1.3.6 in WO ‘379: the reworking is not based on process conditions which the average person skilled in the art would be able to extract from the disclosure of the document but on specialist knowledge of one of its inventors. Therefore, even if it were accepted that the person skilled in the art would have sufficient reason to rework example 7 in order to study the properties of the result achieved thereby, it has not been submitted that the document itself discloses in sufficient details the conditions for reworking example 7. 

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
Novelty – reworking standard (article 54 EPC). In principle, when assessing novelty, the disclosure of a prior-art document also extends to a result which is automatically achieved as a result by reworking a procedure which is being described in a manner, which allows reworking by the person skilled in the art, or where the procedure for reworking is obvious to a person skilled in the art which aims at arriving at a specific technical result. In that way the result itself, at which the skilled person arrives by reworking according to the disclosed procedure, is also directly and unambiguously disclosed.  

IPPT20250307, UPC CFI, LD Düsseldorf, Tridonic v Cupower
Novelty: direct and unambiguous disclosure (article 54 EPC): Findings which a person skilled in the art only gains through further consideration or by consulting other documents or prior use are not part of the prior art. A technical teaching is new if it differs from the prior art in at least one of its known features. Only those features are considered to be part of the prior art which are immediately apparent to a person skilled in the art from the publication or prior use. Findings which a person skilled in the art only gains through further consideration or by consulting other documents or prior use are not part of the prior art. 
 

IPPT20250131, UPC CFI, LD Mannheim, Rematec v Europe Forestry
Product claim 1 lacks novelty (Article 54 EPC). All the features of device claim 1 are directly and unambiguously known from document D3. 

IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Novelty-destroying Implicit disclosure (Article 54(1) EPC). Implicit disclosure means no more than the clear, immediate and unambiguous consequence of what is explicitly mentioned. An alleged prior art disclosure of a feature can be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed. "Implicit disclosure", however, does not only mean information that the skilled person can unequivocally derive from a cited document in addition to what is explicitly described therein. [...] , “implicit disclosure” means any feature which a person skilled in the art would objectively consider as necessarily implied in the explicit content, e.g. in view of general scientific laws. A feature is also implicitly disclosed if, in carrying out the teaching of a prior-art document, the skilled person would inevitably arrive at a result falling within the terms of a claim. 

IPPT20241113, UPC CFI, LD Paris, HP v Lama
Novelty (article 54 EPC). To form part of the state of the art the invention must be found in its entirety and in a single prior art document with its constituent elements, in the same form, with the same arrangement and the same operation with a view to achieving the same technical result. 

IPPT20241031, UPC CFI, LD Düsseldorf, Valeo Electrification v Magna
On the basis of the understanding of the scope, the validity of the patent in suit is reasonably certain: the validity of the patent in suit is more likely than its invalidity. Decisions of other European Courts or decisions of the EPO concerning the same patent do not bind the Court but may provide helpful indications which the Court may take into account. Not general revocation rates of patents, but only the patent in suit is relevant (see R. 211.2 RoP “patent in question”). To assess novelty the entire content of the prior art document must be determined (Article 54 EPC).

IPPT20241017, UPC CFI, CD Munich, Nanostring v Harvard
Assessment of novelty (Article 54 EPC) requires the determination of the whole content of the prior publication. It is decisive whether the subject-matter of the claim with all its features is directly and unambiguously disclosed in the prior art citation. Applying the above standard to the case at hand, the Central Division comes to the conclusion that the subject matter of claim 1 of the Patent as granted lacks novelty over document D10, Göransson et al. 

IPPT20240830, UPC CFI, LD München, Avago v Tesla
Lack of novelty (Article 54 EPC). The subject-matter of claims 1 and 7 and the auxiliary requests is anticipated by D3 ([…]) to the detriment of novelty. In order to be considered part of the prior art in this sense, an invention must be directly and unambiguously disclosed in a single prior art document. It must be identical in its essential components, in the same form, with the same arrangement and with the same features. The lack of novelty also requires that the subject matter of the invention is directly and unambiguously derived from the prior art. This applies to all claim features. The standard for the disclosure content of a publication is what an average person skilled in the relevant field can and may know and understand. 

IPPT20240827, UPC CFI, LD Munich, Hand Held Products v Scandit

Validity. Burden of proof. It is the task of the defendant in the present case to present arguments based on the prior art that make the legal validity of the patent in dispute appear insufficiently secure (Article 54 UPCA). Due to the summary nature of the examination of the legal validity in proceedings for the adoption of interim measures, the number of arguments raised against the legal validity must generally be reduced to the best three from the defendant's point of view. The background to this is that while a summary judgement on questions of fact is conceivable, a summary examination of questions of law is not. Novelty. Youtube video does not directly and unambiguously disclose all the features of claims 1 and 10 (article 54 EPC). 

IPPT20240731, UPC CFI, LD The Hague, Amycel
Novelty arguments rejected (Article 54 EPC, Article 54 UPCA). Both novelty arguments raised by Defendant are unsubstantiated whereas the burden of presentation and proof for facts concerning the lack of validity of the patent and other circumstances allegedly supporting the Defendant's position lies with the Defendant. 

IPPT20240731, UPC DFI, LD Munich, DexCom v Abbott
Standard for novelty review (Article 54 EPC). In order to be considered part of the state of the art (Art. 54 (1) EPC), an invention must be found clearly integrally, directly and unambiguously in one single piece of prior art and in its existing form, it must be identical in its constitutive elements, in the same form, with the same arrangement and the same features. For lack of novelty to be found, the subject-matter of the invention must be derived directly and unambiguously from the prior art. This applies to all claim features. The standard for the disclosure content of a publication is what can and may be expected from the knowledge and understanding of an average person skilled in the relevant art. 

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences

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’. 

IPPT20240704, UPC CFI, LD Paris, DexCom v Abbott  
Novelty (Article 54 EPC). In order to be considered part of the state of the art, an invention must be found integrally, directly and unambiguously in one single piece of prior art and in its existing form it must be identical with its constitutive elements, in the same form, with the same arrangement and the same features. 

IPPT20240703, UPC CFI, LD Düsseldorf, Kaldewei v Bette
Burden of proof invalidity (article 54 UPCA). The burden of presentation and proof for facts relating to an attack on the novelty and/or inventive step of the patent in dispute lies with the defendant. Novelty: direct and unambiguous disclosure (Article 54 EPC). A technical teaching is new if it deviates from the prior art in at least one of the known features. Only that which is directly apparent to a person skilled in the relevant technical field from publication or prior use is anticipated in the prior art. Findings that a skilled person only obtains on the basis of further considerations or by consulting other publications or uses are not prior art. The mere fact that the skilled person has two options for understanding the information speaks against the existence of a direct and unambiguous disclosure.