NJOY v Juul (UPC_CFI_309/2023 and UPC_CFI_315/2023)
Decision date:
05 November 2024
Osborne Clarke summary
- The court confirmed that, due to the front-loaded nature of UPC proceedings, failure by the parties to set out their full case as early as possible could lead to the exclusion of the arguments.
- One of Juul's European Patents relating to a vaporisation device was revoked it its entirety for added matter (EP 115) and another was maintained as granted (EP 911). Both patents had been revoked by the EPO Opposition Division.
- The added matter approach taken with respect to EP 155 was similar to the approach deployed by the EPO Opposition Division. There was an omission in the original claim, which resulted in a new combination of features. An amendment is seen as adding subject-matter that extends beyond the content of the application as filed and is not permitted if the overall change in the content of the application (whether an addition, alteration or removal) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented in the application, even when taking into account information implicit to the skilled person.
- In assessing inventive step with respect to EP 991, the Paris CD stated that "an invention shall be considered as involving an inventive step if, having regard to any element that forms part of the state of the art, it is not obvious to a person skilled in the art" (emphasis in original). It added that limiting the evaluation of inventive step to certain elements of the prior art, e.g. a document perceived to be "the closest prior art", involved the risk of introducing subjective elements into the assessment. However, for reasons of procedural efficiency it may be justified in reducing the evaluation of other elements of the prior art to a minimum. The Paris CD noted that what is to be evaluated in the inventive step assessment is "an activity". An activity can be motivated by an underlying problem. The court stated that it is then decisive "whether what is claimed as an invention did or did not follow from the prior art in such a way that the skilled person would have found it in his attempt to solve the underlying problem on the basis of its knowledge and skills, for example by obvious modifications of what was already known".
Issue
Curious about how UPC decisions might impact your business? Have questions about the UPC?
Reach out to our patents team for expert guidance and support.