Key takeaways
Added matter: Omitting a feature disclosed together with claimed features constitutes added matter only where an extricable functional or structural link exists between the omitted and claimed features (Art. 138(1)(c) EPC, Art. 65(2) UPCA).
One situation where added matter may arise is when claimed subject-matter is obtained by importing one or more features from a certain embodiment in the application into a claim, while omitting one or more other features of this embodiment which were presented in combination with the imported feature(s) in the disclosure of this embodiment. This is referred to as an “intermediate generalisation”. This is generally considered to be unallowable if there is a clearly recognisable functional or structural relationship among the omitted feature(s) and the claim features, also referred to ’an extricable link’ between the omitted feature(s) and the claim features.
Inventive step: The technical effect the invention aims to achieve, and whether an omitted feature contributes thereto, is relevant when assessing whether that feature is essential to the claimed invention (Art. 138(1)(c) EPC).
The technical effect that the invention aims to achieve, and whether an omitted feature contributes thereto, is relevant for the assessment of added matter. It is relevant when considering whether the skilled person would understand from the disclosure of the application as a whole that there is a structural or functional relationship between the omitted feature and the other features of the claimed embodiment or, in other words, when considering whether there is an inextricable link with such other features or, yet differently worded, whether such omitted feature is essential to the invention.
Inventive step: A prior art embodiment cannot serve as a valid inventive step starting point if it cannot itself solve, or be adapted without redesign to solve, the same objective technical problem as the patent.
The Court found the claimant’s chosen prior art starting point unsuitable, since reaching the claimed “plug-and-socket from beneath” configuration would require redesigning the entire prior art device, and the combined prior art disclosed the opposite (“top-mounting”) assembly direction.
New legal arguments raised for the first time on appeal, but based on the same facts and evidence already before the first instance, are not barred under R. 222.2 RoP.
The defendant’s objection that a claimant’s “essential feature” argument was inadmissible as newly raised on appeal was rejected, since only the substantive test for added matter matters, irrespective of the doctrinal label used.
Division
Court of Appeal (impugned decision issued by the Central Division Paris)
UPC number
UPC_CoA_884/2025 (appeal from UPC_CFI_231/2024)
Type of proceedings
Appeal against a decision dismissing a central revocation action
Parties
Appellant (Claimant at first instance): Sibio Technology Limited
Respondent (Defendant at first instance): Abbott Diabetes Care Inc.
Patent(s)
EP 3 831 283
Jurisdictions
UPC
Body of legislation / Rules
Art. 65(2) UPCA, Art. 69 UPCA, Art. 138(1)(c) EPC, R. 220.1(a) RoP, R. 222.2 RoP
