Court of Appeal, December 29, 2025, decision on revocation action, UPC_CoA_71/2025

The Appellant argued that a translation of a Korean prior art document filed by the Respondent in first instance was incorrect and at best inaccurate and filed own translations on appeal. The CoA holds that these translations are late filed and shall be disregarded. Given the importance of the prior art document at issue for the first instance proceedings, the Appellant should have checked the accuracy of the translation at an early stage and should have submitted new translations to the Central Division (decision, mn. 17).

Under the front-loaded procedural system of the UPC, the parties are required to set out their full case as early as possible (RoP, preamble at 7). Nevertheless, specific new arguments may be admitted into the proceedings in consideration of specific circumstances of the case. The CoA holds that provisions must also be interpreted in the light of the principle of proportionality (RoP, preamble at 3). Furthermore, R. 44 RoP requires an “indication” of the facts relied on. This argues against an overly strict application. Furthermore, fairness (RoP, preamble at 5) may require that the claimant in an action for revocation be allowed to introduce new facts and evidence in response to the statement of defence. This may include evidence to prove a point already made by the claimant on the common general knowledge of the skilled person, or to rebut evidence brought forward by the defendant on this point (decision, mn. 27 seq.).

Against this background, in the present case an expert opinion regarding common general knowledge and claim construction enclosed with the reply to the defence to revocation was admissible.

The defence to the application to amend the patent does not provide the claimant with an opportunity to introduce new grounds of invalidity in relation to the patent as granted, such as new prior art considered either novelty destroying or convincing starting points for the assessment of lack of inventive step, unless leave to amend the case is granted (R. 263 RoP). This means that a distinction must be made between the grounds, facts and evidence relied on in relation to the patent as granted and those relied on in relation to the proposed amendments (decision, mn. 26).

In the course of determining the objective technical problem underlying the patent-in-suit, the CoA states that it cannot find anything in the patent specification to support Appellant’s view according to which the skilled person would consider a functional interaction or combined effect of two structural elements of the claimed device. This is not the understanding of the skilled person, who understands each feature to serve its own purpose; the electrical contacts (one structural element) to ensure the power supply to the heating element and the window (another structural element) to provide visibility of a portion of the cartomizer when inserted (decision, mn. 81).

In the course of assessing inventive step, the CoA starting from the legal standard that a claimed solution must be considered obvious when the skilled person starting from a realistic starting point in the prior art would take the next step prompted by the pointer or as a matter of routine, and arrive at the claimed invention holds that in an effort to provide a vaporizer that facilitates checking the status of the inserted cartomizer, the skilled person considers general means known to them on the basis of their common general knowledge, which are known for a variety of applications and belong to the standard repertoire of the skilled person. Wishing to provide a vaporizer that facilitates checking the status of the inserted cartomizer, the skilled person would have considered as a routine adaption the inclusion of a window, a well-known general means for everyday appliances and devices, provided at the obvious place: the cartomizer receiving segment. The result of such a step was readily predictable (decision, mn. 103, mn. 105).

Pursuant to R. 50.2 RoP, any Application to amend the patent shall contain an explanation as to why the amendments satisfy the requirements of Articles 84 and 123(2), (3) EPC and why the proposed amended claims are valid. The CoA notes that the term “free-standing” does not appear in the specification whether in relation to a liquid or any other fluid mentioned in the patent specification such as wax, oil or gel (para. [0034]) and there is nothing in the patent specification that would explain what a free-standing fluid is. It would therefore only be clear if it was established that it was understood by the skilled person based on its common general knowledge as a liquid column as opposed to a soaked sponge or similar. From the CoA’s perspective, the Appellant has not provided sufficient substantiation in this regard (decision, mn. 131).

The CoA considers that the object of the claimed invention of dependent claim 10 is not only to provide a vaporizer that facilitates checking the status of the inserted cartomizer but that also allows to control the vaporization temperature. Being functionally independent of one another, these problems should be assessed separately for inventive step (decision, mn. 162). Accordingly, the skilled person may combine different prior art references to solve the functionally independent problems.