Key takeaways
R. 30 (1) (c) RoP does not set out the consequence that all amendments proposed (auxiliary requests) should be dismissed en bloc as not meeting the criterion of being reasonable in number.
Only some of the proposed auxiliary requests may be admitted.
The Court can limit a patent by an amendment of the claims and revoke it in part according to Art. 65 (3) UPCA independent of an application to amend the patent (Rule 50 (2) RoP).
An application to amend to patent cannot generally be seen as a motion to abandon the granted patent in its entirety if the initial request to maintain the patent as granted cannot be granted in its entirety.
Therefore, the Court examines if the grounds for revocation affect the patent only in part, i.e., each attacked claim of the granted patent, including each dependent claim.
By way of requesting the (entire) patent to be revoked, Claimant set the task to evaluate if the grounds for revocation do indeed affect the patent in its entirety or only in part.
Art. 65 (3) UPCA only pertains to a granted patent.
The Court is not obliged to evaluate if an application to amend the patent can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (the complete claim set) or not.
By the sequence of its requests the patent owner can indicate that it requests the Court to consider its application to amend the patent prior to the evaluation if the patent as granted shall be revoked in part and limited by a corresponding amendment of the claims.
According to the dispositive principle a dispute before the Court generally is controlled by the parties. Art. 76 (1) UPCA rules that the Court shall decide in accordance with the requests submitted by the parties.
If a party, in its first submission, raises an argument and the other party takes issue with this argument in reply, the party may further substantiate its initial argument in its second submission.
The parties are under an obligation to set out their full case as early as possible (Preamble RoP 7, Rule 44 RoP). A failure to do so may lead to the exclusion of arguments. However, in order to secure fairness and equity of the proceedings (Preamble RoP 5), it may be admissible to further substantiate an argument raised in the first submission in a second submission.
The claim interpretation to be performed by the Court is a question of law and therefore performed at any stage.
The interpretation of a patent claim does not depend solely on the literal meaning of the wording. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim. However, the patent claim is the decisive basis for determining the scope of protection (Art. 69 EPC).
An amendment is regarded introducing added matter if the overall change in the content of the application results in the skilled person being presented with information which is not directly and unambiguously derivable from the previous application – even when account is taken of matter which is implicit to a person skilled in the art.
Any amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing (or the priority date), from the whole documents as filed. An omission of a feature from an original set of features can qualify as such an amendment going beyond the direct and unambiguous disclosure content of a previous application.
Clarity is a fundamental requirement for a claim to be allowable – also for claims within an application to amend the patent.
The necessity for claims within an application to amend under Rule 50 RoP to pertain to the requirement for clarity is emphasized by the reference to Art. 84 EPC in Rule 50 (2) RoP. Moreover, Rule 50 (2) RoP requires the application to amend to contain explanations as to why the amendments satisfy the requirements of Art. 84 EPC. A mere statement that an amendment does not introduce any unclearity does not fulfil this requirement.
A mere repetition of an unclear phrase in the original application documents does not make the phrase clear.
Division
Central Division Paris
UPC number
UPC CFI 309/2023
Type of proceedings
Revocation action
Parties
Claimant: NJOY Netherlands B.V.
Defendant: Juul Labs International, Inc.
Patent(s)
EP 3 498 115 B1
Body of legislation / Rules
Rule 30(1)(c) RoP, Rule 50(2) RoP, Art. 65(3) UPCA, Art. 76(1) UPCA, Art. 69 EPC, Art. 84 EPC, Art. 123(2) EPC, Art. 138(1)(c) EPC
