In decision UPC_CoA_774/2024, dated October 2, 2025, the Court of Appeal of the UPC held that the same standard applies to assess “added matter” in granted claims of a patent whether in view of the application as filed, or in view of each parent application from which the patent derives, when the patent is issued from a divisional application.
This appeal opposed expert e-Commerce GmbH and expert klein GmbH (Appellants, collectively designated as “Expert”) to Seoul Viosys Co., Ltd (‘Viosys’).
Viosys is the owner of EP 3 926 698 (the ”Patent”) which relates to a light-emitting diode (‘LED’). The Patent is a second generation divisional application (i.e. a divisional application of EP 17165501.2, which is itself a divisional application of EP 12832213.8). Viosys claimed that a smartphone distributed by Expert contained a LED chip that infringes the Patent.
The impugned decisions are the orders ORD_598458/2023 (infringement claim filed by Viosys) and ORD_50675/2024 (counterclaim for revocation filed by Expert) of the court of First Instance of the Unified Patent Court, Düsseldorf Local Division, dated October 10, 2024.
In first instance, the local division Düsseldorf of the UPC had found that the Patent did not suffer from an impermissible extension of the subject matter, nor was it obvious, thereby dismissing the counterclaim for revocation filed by Expert (ORD_50675/2024).
In the appeal proceedings, Expert requested that the Court of Appeal set aside the contested decision concerning the counterclaim for revocation. Expert’s counterclaim for revocation relied on the ground that claim 1 was insufficiently disclosed in the parent application, because figures 24 to 26 of the parent application did not disclose all features of claim 1.
The European Patent Convention (‘EPC’) provides that a European patent may be revoked on the ground that the subject-matter of the European patent extends beyond the content of the application as filed or, if the patent was granted on a divisional application, beyond the content of the earlier application as filed (article 138 (1)(c) EPC).
The Court of Appeal of the UPC held that an inadmissible extension of the subject matter occurs when the subject matter of the granted claim extends beyond the content of the application as originally filed. In order to determine this, the court must first ascertain what information the skilled person, based on an objective assessment and with reference to the filing date, would immediately and unambiguously derive from the entirety of the application as filed, using his general technical knowledge. In doing so, implicitly disclosed subject matter must also be regarded as part of the content, i.e. subject matter that clearly and unambiguously results from what is expressly stated. The Court of Appeal clarified that if the patent has been derived from a divisional application, this requirement applies to each earlier application.
The subject matter of granted claim 1 of a patent issued from a divisional application must therefore not extend beyond (1) the disclosure of the originally filed application for the patent at issue and (2) the disclosure of the original application which constitutes the parent application of the divisional application.
Access to the decision in English: https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/Decision%20764-2025%20774-2025%20EP698%20EN.pdf