UPC CFI LD The Hague, 19 June 2024: preliminary measures denied - added matter under the "gold standard" disclosure test of the Boards of Appeal
21-06-2024 Print this page
Preliminary measures denied. No sufficient degree of certainty that patent is valid (Article 62(4) UPCA; Rule 211(2) RoP). Added matter under the so-called “gold standard” disclosure test of the Boards of Appeal of the EPO for added matter (article 138(1)(c) EPC).
International jurisdiction UPC (Article 31 UPCA). After Sibio c.s.’ defence, Abbott indicated that it did not mean to include Ireland, so there is no need to decide on competence with regard thereto.
Sufficient degree of certainty that the patent is valid (Rule 211(2) RoP) is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid.
The burden of presentation and proof with regard to the facts from which the lack of validity of the patent is derived and other circumstances favourable to the invalidity or revocation lies with the opponent (Art. 54 UPCA).
Added matter. The Court applies the so-called “gold standard” disclosure test of the Boards of Appeal of the EPO for added matter (article 138(1)(c) EPC) which is also the standard used in many Contracting Member States of the UPC.
Claim 1 appears to be the result of an unallowable intermediate generalization, at least relating to the omission of the presence of an elastomeric seal in the recess of the base portion of the enclosure (in feature 1.4).
For intermediate generalization to be considered allowable (in the sense that it does not result in added matter), it should be (clearly) established that there is no structural and functional relationship between the omitted feature and the other features incorporated into the claim.
Abbott ordered to bear reasonable and proportionate legal costs and other expenses incurred by Defendants in these proceedings, up to the applicable ceiling (Art. 69 UPCA; and R. 118.5 and R. 150.2 RoP); Even if the applicant were to be successful in the proceedings on the merits, it will still have to bear the costs of these proceedings as the unsuccessful party.
