CD Milan, November 11, 2026, Decision of the Court of First Instance, UPC_CFI_292/2026

In the current case, Claimant did not file a copy of the patent in suit, but only a digital copy of the patent application EP 4458303 A2. The court ruled that it may read the patent text of its own motion (ex officio).

However, the court may not obtain prior art documents ex officio, even if they are publicly available. Notwithstanding their public availability, such documents must be duly introduced into the proceedings by the party relying on them, in accordance with Article 54 UPCA and Rules 44.1(i), 170.1(a) and 172 RoP.

Corresponding headnote: The patent in dispute constitutes the subject-matter of the Court’s examination and may therefore be consulted ex officio where a party has identified it but has not filed a copy. This does not apply to patents or patent applications (or file history) relied upon as evidence in support of invalidity objections: notwithstanding their public availability, such documents must be duly introduced into the proceedings by the party relying on them, in accordance with Article 54 UPCA and Rules 170.1(a) and 172 RoP. Such materials constitute procedural documents in the strict sense: they form the evidentiary basis of the parties’ allegations under R. 170.1(a) RoP. Their public availability, and the Court’s practical ability to access them, does not relieve the party relying upon them of its burden of pleading and allegation.

Where a patent designates no measurement protocol or threshold for a parameter range, anticipation is established if any technically reasonable method, applied coherently to the prior art disclosure, yields a value directly within that range. Here, measuring the prior art irradiance curve at its base anticipated the claimed beam spread.

Corresponding headnote: 2. For the purpose of assessing novelty of a claim reciting a parameter range, where several technically reasonable methods are available to measure the parameter, and where the patent does not designate one in particular, it is sufficient that at least one of them, applied coherently to the prior-art disclosure, leads directly and unambiguously to a value within the claimed range, to consider that the corresponding feature is anticipated.

While an opposing party can only take note of an unconditional claim deletion, merging dependent claims constitutes a claim amendment. Under Rules 30.2 and 50.2 RoP, late-filed amendments submitted shortly before oral argument are inadmissible if the defendant fails to show reasonable diligence and if admitting them unfairly hinders the claimant’s defense.

Corresponding headnote: 3. Claim deletion occurs where part of the claim set is simply removed. In that event, the opposing party can only take note of the proprietor’s decision to abandon a dependent claim. By contrast, when an amendment under Rule 50 RoP – although it may also take the form of a mere deletion – results in a reformulated claim set, including where dependent claims are concerned, this remains subject to the Court’s assessment as to clarity, added matter and validity pursuant to R.50.2 RoP and also to observations by the opposing party under the adversarial principle.