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Added matter remains one of the most challenging and unforgiving aspects of European prosecution and post-grant actions. Both an EPO opposition and a UPC revocation action can be brought against a granted patent on the ground of added matter alone. The European Patent Office has long maintained a strict requirement that any amendment meets the so called “gold standard” of being directly and unambiguously derivable from the application as filed. It appears the UPC will be following in the footsteps of the EPO with this strict approach.
Whilst the recent UPC Court of Appeal Decision UPC_CoA_764/202 does not use the phrase 'gold standard' at any point, it does make it clear that added matter should be assessed on "...what the skilled person would derive directly and unambiguously using his general common knowledge..." from the application.
The case in question related to a divisional patent where claim 1 of the parent application was directed to a light emitting diode (LED) comprising "a plurality of mesas". In contrast, the divisional patent had granted claims that did not define the number of mesas but instead claimed "mesa-etched areas". It was common ground that this encompasses a LED comprising one or more mesa. The question was whether a claim which omitted the requirement for a plurality of mesas unallowably added subject matter.
The Local Division Dϋsseldorf found in the first instance decision that the presence of "mesa-etched areas" was sufficient for the objective of the patent to be achieved so that there was no added subject matter. The Court of Appeal focused on the "Technical Solution" of the description and noted that it underscores that the application purports to solve the technical problems arising from the presence of a plurality of mesas. As the patentee was unable to show that any embodiment with just one mesa was disclosed, it was found that claim 1 added subject matter because it covers embodiments with just one mesa.
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This recent decision illustrates just how strictly any amendment, including deletion of a feature, will be examined at the UPC for added subject matter. This approach will be familiar to attorneys used to representing clients at the EPO Boards of Appeal, even if the UPC do not explicitly refer to the "gold standard".
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.
