Key takeaways
The Court does not evaluate reasons for revocation that the Claimant has not raised.
The Claimant defines the scope of evaluation for a revocation action.
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.
An objective approach must be applied to the assessment of inventive step. The references to the skilled person and to the state of the art in Art. 56 EPC are elements of this objective approach.
Subjective considerations, a subjective motivation to make specific modifications to the prior art or the subjective knowledge and skill of the named inventor(s) (or the parties to the case), for example, are not to have an influence on the evaluation of inventive step.
According to Art. 54 (2) EPC 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 the filing (or priority date) of the patent application.
In general, an invention shall be considered involving an inventive step if, having regard to any element that forms part of the state of the art, it is not obvious to a person skilled in the art.
Limiting the evaluation of inventive step to certain elements of the prior art, for example a document perceived to be “the closest prior art”, generally bears the risk of introducing subjective elements into the evaluation, for example if the reasons for disregarding certain elements of the prior art are of subjective nature.
For procedural efficiency it may be justified in a particular case to focus the debate on a certain element or on certain elements of the prior art and it may be justified in a particular case to reduce the evaluation of other elements of the prior art to a minimum.
The reference to an inventive step indicates that what is to be evaluated under Art. 56 EPC is an activity. An activity can be motivated by an underlying problem.
It is decisive whether what is claimed as an invention did or did not follow from the prior art in such a way that the skilled person would have found it in its attempt to solve the underlying problem on the basis of its knowledge and skills, for example by obvious modifications of what was already known.
Division
Central Division Paris
UPC number
UPC CFI 315/2023
Type of proceedings
Revocation action
Parties
Claimant: NJOY Netherlands B.V.
Defendant: Juul Labs International, Inc.
Patent(s)
EP 3 504 991 B1
Body of legislation / Rules
Ruel 44 RoP, Preamble RoP 5, Preamble RoP 7, Art. 56 EPC
