CD Paris, October 20, 2025, revocation action and counterclaim for infringement, UPC_CFI_189/2024, UPC_CFI_434/2024

The assessment of the inventive requires the following three steps:

1.) Identification of the objective problem underlying the claimed invention, which must be carried out in light of the patent’s specification. The problem should be identified in an abstract and neutral way as to avoid the risk of hindsight.

2.) Identification of the state of the art at the time of the claimed invention, which can be represented by one or more realistic starting points and is left to the initiative of the parties. Proceedings before the UPC are guided by the principle of party disposition, meaning that, unlike what generally happens before administrative patent-granting offices, the Court cannot independently acquire relevant prior art evidence on its own motion.

3.) Would it have been obvious for the person skilled in the art to arrive at the claimed solution?

It may be assumed that realistic starting points, in general, are the pieces of evidence

a) which disclose the main relevant features as those of the challenged patent and for that reason have constituted the basis for the developing of the inventive idea and/or

b) which address the same or a similar underlying problem.

A “holistic approach” which is a broader way of assessing (non-)obviousness by considering the invention as a whole, rather than just focusing upon isolated
distinguishing features, appears, in general, to be more appropriate.

While a general injunction to restrain future infringements is the normal remedy for the patentee where its patent is infringed, the Court has a discretionary power and must refuse granting an injunction or issuing corrective measures where it would be disproportionate or unreasonably detrimental to the interests of third parties.

Excluding a certain product from the range of those available to medical practitioners for the performance of certain procedures does not engage in itself a relevant public interest, because it does not necessarily carry with it the implication that, should the choice not been available, all the patients could not be treated adequately with the remaining products.

After all pleadings provided by the written procedure have been submitted, Claimant of the counterclaim for infringement requested, under R. 263 (1) RoP, leave to amend its counterclaim in the way that it explicitly extends to the new product of the counterclaim-defendants. The judge-rapporteur granted the request, allowing the parties to exchange further written pleadings on this matter.

The Court was only informed by the parties at a late stage in the proceedings, namely after the written procedure was closed and the interim conference was held, that parallel opposition proceedings were pending at the EPO. The Defendant informed the Court that a preliminary opinion had been issued by the EPO. The Court did not stay the proceedings because

a) none of the parties had requested a stay,

b) the UPC proceedings were already at an advanced stage, and

c) postponing the decision on the infringement action (which was ready to be decided) would “frustrate[] the patent proprietor’s interest in swift protection of its exclusive right.”