NJOY v VMR Products (UPC_CFI 311/2023)
Decision date:
21 January 2025
Osborne Clarke summary
- NJOY's revocation action concerning VMR's patent relating to electronic cigarettes was dismissed by the Paris CD. VMR's patent was maintained as granted.
- NJOY challenged the patent on the basis of lack of inventive step. In an assessment of inventive step, the Paris CD held that the court must first determine one or more realistic starting points in the state of the art that would be of interest to a person skilled in the art who, at the priority date, was seeking to develop a product or process similar to the patent. To be considered a realistic starting point, a document must disclose the main relevant features as disclosed in the challenged patent or address the same or similar underlying problem.
- Due to the frontloaded nature of UPC proceedings, in revocation actions the claimant is required to specify in detail the grounds of invalidity that allegedly affect the patent, as well as the prior art documents relied on to support any allegation of lack of novelty or lack of inventive step. As such, a claimant cannot introduce new grounds of invalidity or new documents considered novelty destroying or affecting inventive step in subsequent written statements. This would constitute an amendment of the case falling within the scope of Rule 263 RoP, which is only permitted by the court upon a specific request that demonstrates that the requirements of the rule have been met.
Issue
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