Revocation Action before the Paris Central Division

Revocation Action before the Paris Central Division – Frontloading, yes, but with common sense

On November 27, 2024, the Paris seat of the Central Division of the Unified Patent Court issued a decision in case No. UPC_CFI_308/2023. The dispute revolved around European Patent No. EP 3 456 214, concerning vaporizers (electronic cigarettes). The judgment offers some insights into the UPC's approach to its “front-loaded” procedural system and the evaluation of inventive step.

A Strict but Reasonable Approach to Procedural Efficiency

The Paris Central Division reaffirmed the importance of the “front-loaded” procedural system under the Rules of Procedure (RoP). Parties must present their full case, including all relevant facts and evidence, as early as possible. However, the Court underscored that this principle must be balanced with proportionality and procedural efficiency, ensuring that parties are not burdened with unnecessary tasks or excessive documentation.

The Court held that while claimants cannot generally introduce new grounds of invalidity or new evidence after their initial filing, exceptions exist where these additions directly respond to arguments raised by the defendant.

In this case, the claimant, NJOY Netherlands B.V., faced objections from the defendant, VMR Products LLC, regarding late-filed evidence. The Court allowed the admission of certain documents, stating that they supported the claimant’s earlier arguments and addressed points raised in the defense. However, filings that extended beyond this scope were excluded.

The Central Division also provided further guidance on what cannot be introduced by the claimant after the statement of claim, e.g., with the reply to the statement of defense. A red line seems to be, in this regard, a new document as novelty-destroying prior art (even if the document itself was already submitted with the statement of claim) or a new document as a starting point for the question of inventive step (even if the document was already submitted with the statement of claim).

Auxiliary Requests and dependent claims

The defendant submitted 35 auxiliary requests, later reduced to 10 during the proceedings (which were all dismissed by the Central Division. Interestingly, the Central Division also examined – individually - the dependent claims of the patent which seems to be meanwhile common practice in at least some Divisions of the UPC, and in particular at the Paris Central Division.

Key Takeaways

• Proportionality in “Front-Loaded” Procedures: While the UPC's Rules of Procedure emphasize early disclosure of facts and evidence, the principle of proportionality ensures that procedural demands remain reasonable and efficient.
• Red lines for late filed attacks: Presenting a new document as novelty-destroying prior art (even if the document itself was already submitted with the statement of claim) or a new document as a starting point for the question of inventive step (even if the document was already submitted with the statement of claim) is not possible.
• Auxiliary Requests and Dependent Claims: 35 auxiliary requests where filed, later reduced to 10. The Central Division examined all dependent claims after having concluded that none of the auxiliary requests can be allowed (in accordance with a corresponding request of the proprietor).

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