Central Division, Paris Seat, 19 July 2024, Decision of the Court of First Instance, UPC_CFI_255/2023

In the situation of concurrently pending invalidity attacks by different parties against the same patent before different divisions (here: revocation action before CD and counterclaim(s) for revocation before LD) the local division has a discretion either (i) to proceed with both the action for infringement and the counterclaim for revocation, (ii) refer the counterclaim for revocation to the central division for decision, or (iii), with the agreement of the parties, refer the entire case to the central division for decision, Art. 33 (3) UPCA.

The Court’s decision how to proceed should be taken on a “case-by-case basis” (cf. item 19 of decision). In exercising its discretionary power, the Court must take into account the principle of efficiency of the proceedings. This can be undermined by unnecessary procedural activities, duplication of these activities, and by irreconcilable decisions. The Court must consider the interest in issuing expeditious decisions, which are important for enhancing legal certainty regarding the validity and enforcement of the patents. A relevant factor is whether there is likely a significant time difference between the decisions of the involved divisions. Also, the similarity of grounds for invalidity in both proceedings and the multiplicity of infringement actions in which counterclaims against the same patent are filed are relevant considerations (cf. item 20 of decision).

The competence of the central division as established by Art. 33 (4) UPCA cannot be derogated by virtue of the joinder of the proceedings as regulated in R. 340.

Contrary to an earlier order of the LD Munich, the CD held that a “joint hearing” for the revocation proceedings in the sense of R. 340 does not require a joint hearing for revocation proceedings before a panel comprising all judges from both the central and the respective local division. The LD Munich’s interpretation would lack a legal basis in the UPCA and the RoP and was not supported by EU law principles (cf. item 22 of decision). Instead, revocation action and counterclaims for revocations should be joined at the Central Division and a single decision is ultimately issued. However, this does not result in a merger of the claims as both the revocation action and the counterclaim for revocation retain their distinct legal identities and must be adjudicated independently (cf. item 23 of decision).

Rule 30.2 RoP allows for a “subsequent” request to amend the patent. This requires that an admissible request to amend the patent must have been filed before. If this first application to amend the patent is found to be inadmissible (e.g. because the required explanation of why the proposed amendments satisfy the requirements of Art. 84 and 123 (2) (3) EPC), any subsequent request to amend the patent must also be considered inadmissible. However, if the previous request was only unsubstantiated (e.g. by insufficient explanation) a subsequent request may be filed (cf. items 7 and 29 to 34 of decision).

Original request to amend application was based on 9 conditional amendments and 84 auxiliary requests. Even though the panel considered this number to be “extremely high” and “potentially hindering the efficiency of the UPC proceedings”, said number was considered to be a result of the complexity of the case (in particular its technical field) and was not considered to be “unreasonable” (cf. item 33 of decision).

When inventors/applicants transfer rights associated with patent applications, in reality, there is often no distinction between the right to file a subsequent patent application and the right to priority. Instead, the right to priority is usually treated as a mere ancillary right to the right to the subsequent patent application.

The CD accepts a rebuttable presumption of the entitlement to priority in favour of the subsequent applicant, provided the latter can demonstrate the acquisition of the right to the title. It reasons that under normal circumstances, any party transferring the right to a subsequent application intends for the subsequent applicant to benefit from the priority. Also, in most European national legislation no formal requirements for transferring priority rights exist. Therefore, the rebuttable presumption of the entitlement to priority in favour of the subsequent applicant is generally justified, unless the claimant/counterclaimant presents particular evidence to the contrary (cf. items 85 to 91).

The current patent concerns transcatheter aortic valve implantation (TAVI) systems, which comprise a collapsible prosthetic heart valve and a delivery catheter configured to hold the collapsed prosthetic heart valve and deploy the prosthetic heart valve in the cardiac system by releasing and subsequent expansion of the prosthetic.

While the panel acknowledges that the medical field of TAVI procedures was originally developed by combining vascular stent technology with surgical leaflet valve technology developed for surgical aortic valve replacement (SAPR), the panel found that stents and heart valves are very different devices with very different requirement profiles and therefore a reference to the prior art in the stent field would require careful consideration and a strong motivation for application to heart valve technology (cf. items 141/142 of decision).

The panel emphasized that the EPO’s “problem-solution approach” – even though it is commonly used by the EPO and part of the EPO’s Guidelines for Examination – does not represent a mandatory requirement for UPC proceedings, since the approach is not explicitly provided for in the EPC (cf. items 153 to 155 of decision).