Key takeaways
The “same invention” test for priority (Art. 87 EPC) equals the standard for added matter, confirming a consistent disclosure standard across the UPC.
The Court confirmed the recent Dusseldorf LD decision (UPC_CFI_115/2024, Decision of 15 October 2025) that for purposes of determining the correct priority date, the same standard applies as for added matter, as it is the case at the EPO. Accordingly, the term ‘the same invention’ in Article 87 EPC is to be interpreted as meaning that a claimed invention is to be regarded as the same invention as the invention in an earlier application if the skilled person can derive the subject-matter of the claim directly and unambiguously from the earlier application as a whole using common general knowledge. Against this background, the Court found the patent validly claimed priority because the skilled person could at least implicitly derive the “load-bearing” frame and “non-load-bearing” hatch features from the priority document’s overall disclosure, even without express wording.
Invalidity grounds must be introduced into the proceedings at the same time as the counterclaim for revocation in the UPC’s front-loaded system.
The Court expressed that defendants’ attempt to introduce in a new brief a new attack against the validity of the patent in suit after the time period for the counterclaim for revocation had already expired could possibly be considered an untimely amendment of the action (R. 263 RoP). The burden of proof that both the requirements of R. 263(1) RoP and the grounds under R. 263(2) RoP are not met lies with the applicant. Ultimately, however, the Court left open the question of whether the requirements were met in the present case. In the Court’s opinion, the submitted Exhibits did not constitute prior art anyway. The Court further explained that it is not permissible to assert a lack of inventive step on the basis of documents already in the proceedings during the oral hearing. The formulation of a new attack on inventive step in the oral proceedings is to be regarded as an amendment to the counterclaim pursuant to R. 263 RoP, which would require approval by the court.
General claim terms are not limited to specific embodiments in the description or cited prior art.
A term that is referred to in general terms in the claim is to be interpreted based on the plain meaning (Art. 69 EPC).
Division
Local Division Hamburg
UPC number
UPC_CFI_461/2024, UPC_CFI_718/2024
Type of proceedings
Main infringement action with counterclaim for revocation
Parties
Claimant and Counter-Defendant: Dolle A/S
Defendants and Counter-Claimants: FAKRO Dachflächenfenster GmbH (Austria), FAKRO Dachfenster GmbH (Germany), FAKRO Danmark A/S (Denmark), FAKRO Sp.z.o.o. (Poland)
Patent(s)
EP 2 476 814
Jurisdictions
UPC (DE, AT, DK, SE)
Body of legislation / Rules
Art. 25, 31, 32, 63, 64, 67, 68, 69, 82 UPCA
Art. 54, 56, 69, 83, 87, 123(2) EPC
R. 19.7, 25, 118.8, 119, 191, 263, 354.3 RoP
