LD Munich, August 30, 2024, Decision on infringement action and counterclaim for revocation, UPC_CFI_52/2023

The UPC Court of Appeal proceeds from the following principles in accordance with Art. 69 of the Convention on the Grant of European Patents (EPC) and the Protocol on its Interpretation.

The patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent.

The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. 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, this does not mean that the patent claim merely serves as a guideline and that its subject-mater also extends to what, after examination of the description and drawings, appears to be the subject-mater for which the patent proprietor seeks protection.

The patent claim is to be interpreted from the point of view of a person skilled in the art.

In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.

These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent. This follows from the function of the patent claims, which under the European Patent Convention serve to define the scope of protection of the patent under Art. 69 EPC and thus the rights of the patent proprietor in the designated Contracting States under Art. 64 EPC, taking into account the conditions for patentability under Art. 52 to 57 EPC.

In the English language, a list of elements with the wording “at least one of: A, B, and C” must be disinguished from a list of elements with the wording “at least one of: “A, B, or C”. The use of the word “and“ can be understood to mean that the listed elements must be cumulatively present, in the sense of “at least one of A, and at least one of B, and at least one of C”. In contrast, the use of the word “or” indicates that the listed elements are to be understood as an alternative in the sense of “at least one of A, or at least one of B, or at least one of C”.

According to Art. 54(3) EPC, an invention shall be considered to be new if it does not form part of the state of the art. In order to be considered part of the state of the art in that sense, an invention must be found clearly integrally, directly and unambiguously in one single piece of prior art. It must be identical in its constitutive elements, in the same form, with the same arrangement and the same features.
For lack of novelty to be found, the subject-matter of the invention must furthermore be derived directly and unambiguously from the prior art. This applies to all claim features. The standard for the disclosure content of a publication is what can and may be expected from the knowledge and understanding of an average person skilled in the relevant art.