1. Key takeaways
Assessment of original disclosure
The possibility of alternative options for relative positions of two elements of the claimed subject matter does not imply that a feature directed at one of the elements lacks support, as these alternatives are options, and are not inextricably connected with the arrangement of the feature as claimed (sec. 66).
Provided there is a basis in the application as filed, it is allowed to amend the claims pre-grant to include an embodiment that may have been left out of the claims of the application as filed, thereby modifying the scope (sec. 70).
It would be an unduely strict criterion to require that each amendment must be present literally in the application as filed (sec. 73).
The skilled person would understand that, in describing an embodiment, features may be used to illustrate its working that are not necessarily an essential part of the invention (sec. 78).
Drawings in a patent publication serve to illustrate an invention, not to specify dimensions.
Territorial scope is no issue for Preliminary Objection.
The territorial scope of a UPC decision under Art. 34 UPCA does not concern matters of jurisdiction or competence (Art. 31, 32 and 33 UPCA). Therefore, it is not to be challenged by a Preliminary Objection pursuant to R 19 RoP.
Claimant must proof infringement in extra-UPC territory.
A claim concerning alleged acts of infringement on Polish territory is admissible in light of the CJEU decision BSH vs. Electrolux. On the merits, the claimant bears the burden of proof for the alleged facts in accordance with R 13m and R 171.1 RoP. In the case at hand, the court held the infringement of the Polish part of the patent in suit not well founded. It held that no factual elements had been introduced into the proceedings concerning the alleged infringement facts relating specifically to the attacked embodiments. It also held that it is not sufficient that websites are accessible in Europe and that the turnover is provided without any indication as to whether it relates to the attacked embodiments.
2. Division
LD Paris
3. UPC number
UPC_CFI_163/2024
4. Type of proceedings
Main action
5. Parties
Hurom Co., Ltd. (Claimant), NUC Electronics Co., Ltd. (Defendant), NUC Electronics Europe GmbH (Defendant), Warmcook (Defendant)
6. Patent(s)
EP3155936
7. Body of legislation / Rules
Rule 19 RoP, Art. 34 UPCA, Art. 138 (1) (c) EPC, Art. 56 EPC
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.
