AD Article
Added matter before the UPC: an approach identical to that of the EPO
Before the UPC, as before the EPO, patent validity litigations frequently include one or more attacks for non-compliance with Article 123(2) EPC concerning the extension of the claimed subject matter beyond the content of the application as filed. Based on the UPC's case law on this subject, we sought to understand the criteria applied by the UPC to determine whether a patent complies with the requirements of Article 123(2) EPC. In the cases Abbott v. Sibio Technology Limited and Umedwings Netherlands B.V. (together Sibionics ) concerning Abbott's patent EP-3 831 283, the validity of claim 1 of the patent under Article 123(2) EPC was one of the key issues. Sibionics launched multiple attacks in this regard, arguing in particular that claim 1 resulted from an unallowable intermediate generalisation. This argument was used both in defence against Abbott's application for a provisional injunction before The Hague Local Division and in its action for revocation related to the same patent before the Paris Central Division. The application for a provisional injunction gave rise to a first instance decision followed by an appeal decision , and the revocation action gave rise to a first instance decision . While Sibionics won in first instance in The Hague – the patent being considered more likely to be invalid due to added matter – Abbott won on appeal – the patent being considered more likely to be valid and infringed – and, in the revocation action, before the Paris Central Division – the patent being considered valid by the Court in first instance. Let us examine the grounds for these three decisions.