Court Of Appeal, July 13, 2026, Decision, UPC_CoA_473/2025

1. Key takeaways

Defending Dependent Claims Without Formal Amendment

A patentee can defend dependent claims without filing a formal application to amend under Rule 30 RoP;

R. 30 RoP does not require that the patentee submit an auxiliary request as a prerequisite for defending dependent claims. An Application to amend the patent is only required if the patentee wishes to maintain its patent with amended wording, i.e. deviating from the wording of the claims as granted, or proposes combinations of dependent claims not explicitly included therein, thereby limiting the scope of the patent as granted. This is not the case where a patentee merely defends the dependent claim(s), including combination(s) already encompassed thereby.

But it follows from R. 29A(c) RoP that the patentee is required (whether or not as a subsidiary defence) to identify in a sufficiently substantiated manner which dependent claims it considers to be valid should the independent claim be held invalid.

The patentee must argue why dependent claims are valid, but a formal auxiliary request is only needed for new wording, not for defending claims as granted.

Combination of Dependent Claims

If the patentee wishes to rely on a combination of dependent claims that does not directly and specifically follow from their wording, such as where the dependent claims rely on several or even any of the previous claims, the patentee should clearly indicate which combination(s) it considers to be valid, (also) in the language of the patent, should the independent claim be held invalid.

It follows from the principles of due process that the number of such combinations that the patentee wishes to rely on must be reasonable in number, considering the circumstances of the case.

Inventive Step

If there is no pointer to combine a reasonable starting point with another document, a motivation to take the next step in the direction of the invention cannot be derived from the content of such a combination document itself. Failing a motivation for the skilled person to consult a document it will not become aware of its content, and it cannot be concluded that the skilled person would implement the missing feature disclosed therein.

Testing and Development Insufficient for Prior Use Right

Under Art. 28 UPCA and German law, activities like testing and development before the priority date do not constitute the necessary commercial use or arrangements to establish a prior use right.