Key takeaways
An application to substantively amend a patent is only admissible if a full, consolidated set of claims is filed in time with the deadline of the application (R. 30 RoP)
The Court cannot redraft claims for a party due to the principle of judicial neutrality. Amendments must be immediately intelligible without subjective reconstruction, ensuring clarity for the Court, the opposing party, and for subsequent annotations in patent registers. Any substantive amendment requires the applicant to submit a full set of the amended claims. An exception may apply in case of the mere deletion of claims (headnote 3, mn. 114).
The assessment of clarity, the sufficiency of the explanation regarding validity and infringement, and the reasonableness of the number of amendments is a matter of judicial discretion
Based on the specific circumstances of the case, the Court may decline to examine amendments that are inadequately formulated, insufficiently explained, or excessive in number (headnote 2, mn. 113, 116 et seqq).
Vague amendment requests are inadmissible for being indeterminate and improperly tasking the Court with defining the amendment (R. 30 RoP)
Example vague request: “delete any dependent claim as needed” (mn. 119).
Division
Central Division Paris
UPC number
UPC_CFI_433/2024
Type of proceedings
Counterclaim for revocation
Parties
Counterclaimant: Microsoft Corporation
Defendant in Counterclaim: Suinno Mobile & AI Technologies Licensing Oy
Patent(s)
EP 2 671 173
Body of legislation / Rules
R. 30 RoP
R. 355 RoP
Art. 76(1) EPC
Art. 123(2) EPC
Art. 84 EPC
