The Central Division Paris

Review of all granted claims if attacked and if potential claim amendments are not allowed

Decision Overview

On November 5, 2024, the Central Division of the Unified Patent Court in Paris delivered a decision on European Patent EP 3 498 115 B1, significantly impacting cases where the court finds no claim amendments to be allowable.

Examining Authority of the Court

The court clarified its role in examining the granted claims. It emphasized that under Art. 65(3) UPCA, it holds the power to limit patents by amending the claims or revoking them partially, independent of any amendment applications by the patent owner. This means that the UPC must evaluate the patent as granted in a situation that all applications to amend the patent fail. The Court states in detail: “Procedurally, after the Court has evaluated Defendant’s application to amend and has found that the patent cannot be amended as applied for by the Defendant, what needs to be examined by the Court and what remains to be examined by the Court is the unamended patent.”

Proceedings controlled by the Parties

On the other hand, reinforcing the dispositive principle, the decision stressed that the litigation process is largely controlled by the parties involved. The sequence and nature of the requests submitted by a patent proprietor, particularly in a revocation action, guides the court in considering amendments. Similarly, the initial request from the party seeking revocation dictates the court's proceedings, meaning that if a request to revoke the patent in its entirety is made, all granted claims, including dependent ones, must be considered.

Examination of dependent claims

In agreement with the standard practice of the German Federal Patent Court, the Court must examine each claim, including any dependent claim, individually, if attacked. This is not valid, however, for claim sets proposed in an application for amendment. In such a case, the court must evaluate whether or not the complete claim set can be allowed.

Scope of Patent Interpretation

The court also reiterated that the interpretation of patent claims is a question of law that it can address at any stage of the proceedings. The interpretation does not solely depend on the literal meaning of the claims but includes the patent's description and drawings to ensure a comprehensive understanding of its scope. 

Key takeaways

• The court holds the power to only partially revoke patents when proposed amendments are not permissible.
• Litigation is directed by the parties' requests, shaping the court's review process based on their specific claims and revocation requests.
• The court is required to examine each granted claim individually if challenged, contrasting with its approach to whole claim sets in amendment applications.
• Claim interpretation is a question of law. The Court performs it at any stage of the proceedings.

To the decision To the Blog Overview