Article 65

Decision on the validity of a patent

1.   The Court shall decide on the validity of a patent on the basis of an action for revocation or a counterclaim for revocation.

2.   The Court may revoke a patent, either entirely or partly, only on the grounds referred to in Articles 138(1) and 139(2) of the EPC.

3.   Without prejudice to Article 138(3) of the EPC, if the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part.

4.   To the extent that a patent has been revoked it shall be deemed not to have had, from the outset, the effects specified in Articles 64 and 67 of the EPC.

5.   Where the Court, in a final decision, revokes a patent, either entirely or partly, it shall send a copy of the decision to the European Patent Office and, with respect to a European patent, to the national patent office of any Contracting Member State concerned.

Case Law

Court of First Instance

IPPT20250606, UPC CFI, LD Mannheim, Dish v Aylo
Partial revocation (Article 65 UPCA). Revocation of dependent subclaims (Article 65 UPCA). There is generally no legal interest in the isolated removal of dependent subclaims by means of an action for annulment (or counterclaim) without removing the independent claim to which they refer. The subject matter of the patent in suit is not extended by these subclaims as such. Appropriate number of auxiliary request depends on the circumstances of the case and the number of attacks on the patent in suit may also be taken into account (R. 30.1 c) RoP) 

IPPT20250404, UPC CFI, LD Munich, Edwards v Meril
Direct infringement of patent (Article 25 UPCA), counterclaim for revocation dismissed (Article 65 UPCA). 

IPPT20250402, UPC CFI, LD Mannheim, Fujifilm v Kodak - I
Revocation counterclaim dismissed (Article 65 UPCA). . 

IPPT20250219, UPC CFI, LD Hamburg, Lionra v Cisco
Infringement claim and counterclaim for revocation unfounded. 

IPPT20250131, UPC CFI, LD Mannheim, Rematec v Europe Forestry
Patent in suit declared null and void (Article 65 UPCA). Product claim 1 lacks novelty (Article 54 EPC). All the features of device claim 1 are directly and unambiguously known from document D3. Process claim 15 lacks an inventive step. 

IPPT20250128, UPC CFI, LD Düsseldorf, Fujifilm v Kodak
Patent revoked in the territory of all Contracting Member States in which the patent has effect (Article 65 UPCA). Insufficient disclosure of the claimed invention over the complete scope of the granted claims. (Article 83 EPC, Article 138(2) EPC). 

IPPT20250121, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Revocation action dismissed (Article 65 UPCA).  Court not convinced that it would have been obvious to suggest the claimed vaporizer, regardless of ‘Cross’ being combined with an alleged common general knowledge or with ‘Lee’. 

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). 

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL
Revocation rejected, maintained as amended by auxiliary request (Article 65 UPCA).

IPPT20241218, UPC CFI, CD Paris, Tandem Diabetes Care v Roche Diabetes Care
Revocation action dismissed; EP 231 maintained as granted (Article 65 UPCA). 

IPPT20241211, UPC CFI, LD Paris, DexCom v Abbott
EP 282 revoked (Article 138(1)(c) EPC, Article 65(2) UPCA). Lack of inventive step claim 1 as granted (article 56 EPC): the invention set out in claim 1 as granted does not involve an inventive step when considered in view of Valdes combined with Goodnow. Two aspects of the solution -  the presence of a server between the host and the remote devices, and an invitation scheme – are rendered obvious by Goodnow. 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.

IPPT20241129, UPC CFI, CD Paris, NJOY Netherlands v VMR Products
Revocation EP 740 dismissed (Article 65 UPCA). No alleged lack of inventive step. The validity of the independent claim 1 justifies validity of the dependent claims 2 – 6. 

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. Court may amend the patent, independent from auxiliary request (Article 65(3) UPCA). Independent of an application to amend the patent as may be filed by the patent proprietor (R 50 (2) RoP) the Court, according to Art. 65 (3) UPCA, limits the patent by a corresponding amendment of the claims and revokes it (only) in part. Article 65(3) UPCA only pertains to the granted not to an application to amend the patent. No obligation to the Court to evaluate, if an application to amend the patent filed by the patent owner can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (as such; the complete claim set proposed) or not. Defendant’s request is unclear and for this reason unallowable. Defendant did not file any particular claim-sets that would indicate to the Court, which combinations of claims the Defendant would want the Court to examine under request (2) d. in which order. 

IPPT20240916, UPC CFI, CD Paris, BMW v ITCiCo Spain
Decision by default in revocation action (Article 65 UPCA, R. 355 RoP). 

IPPT20240826, UPC CFI, LD Hamburg, Avago v Tesla
Partial revocation (Article 65(3) UPCA). In the opinion of the local division, a patent only be revoked in nullity proceedings before the UPC to the extent that the grounds for revocation are sufficient, so that a patent can also remain (partially) in force to the extent of individual independent patent claims within the scope of the complete set of claims filed as the main or auxiliary request, if this corresponds to the procedural concern of the patent proprietor.

IPPT20240704, UPC CFI, LD Paris, DexCom v Abbott 
Patent revoked because of lack of inventive step. Reasons for validity dependent claims to be presented by patentee (Article 65(2) UPCA). It is not for the Court to provide reasons why any of the grounds for revocation referred to in Art. 65(2) UPCA, as presented by ABBOTT, would not apply to dependent claims 2 to 9.