- within Intellectual Property topic(s)
- with readers working within the Healthcare industries
- within Transport and Privacy topic(s)
1. Key takeaways
If any legitimate mapping of prior art onto claim features destroys novelty, the patent must be revoked (Art. 54 EPC).
When assessing novelty, the Court will examine the disclosure of the prior art document overall and will compare this disclosure to the scope of the patent-in-suit. If one way of “mapping” leads to the assessment that a piece of prior art is novelty destroying, this leads to the result that the patent must be revoked.
The Court is not bound by labels assigned to components in the prior art; what matters is the technical function the disclosed components provide.
Purpose features only require objective suitability for the intended use; they do not necessarily make referenced components mandatory parts of the claim (Art. 69 EPC).
Features describing an intended use (e.g., “for attaching a gas tube”) do not necessarily render the referenced object a mandatory component of the claimed device. The claimed device need only be objectively suitable for the stated purpose.
Expert opinions are party sumbission that do not bind the Court on claim construction
Since claim construction is a matter of law, the Court independently determines the correct interpretation based on the patent itself and is not bound by expert declarations.
The patentee must affirmatively submit restructured claim sets; the Court will not maintain the patent based on unamended dependent claims (Art. 76(1), (2) UPCA).
The Court will only examine amendments formulated by the patentee, as it is bound by the parties’ requests. The patent must formally be restructured to ensure that the new configuration meets legal requirements. This restructuring cannot be provided by the Court.
Since the defendant only alleged novelty of dependent claims by virtue of their dependency on claim 1 (which the Court held not to be novel), and did not independently defend their validity or file properly restructured sets, there was no implicit request to maintain the patent on any dependent claim alone.
Admissibility threshold for auxiliary requests requires only a minimal explanation that amendments satisfy Art. 84 and Art. 123(2), (3) EPC (R. 50.2 RoP).
An explanation need not be complete or ultimately persuasive. Any explanation that raises the impression it could serve as a justification for compliance with Art. 84 and Art. 123(2), (3) EPC suffices to meet the admissibility threshold. Questions of substantive correctness are addressed at the allowability stage.
2. Division
CD Milan
3. UPC number
UPC_CFI_480/2025
4. Type of proceedings
Revocation action – Final decision
5. Parties
Claimant: Fisher & Paykel Healthcare Limited
Defendant: Flexicare (Group) Limited
6. Patent(s)
EP 4 185 356
7. Jurisdictions
UPC
8. Body of legislation / Rules
Art. 54 EPC, Art. 69 EPC, Art. 84 EPC, Art. 123(2) and (3) EPC, Art. 69(1) UPCA, Art. 76(1) and (2) UPCA, R. 50.2 RoP
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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