1. Key takeaways
Standstill provisions do not impact UPC's jurisdiction
Even if a standstill provision requiring pre-suit notification is breached, this does not affect the Court's jurisdiction or the admissibility of the action. The Court emphasized that access to justice is a fundamental right (Art. 47 of the Charter of Fundamental Rights of the EU), but that such a breach may have contractual implications.
Front-loaded proceedings are crucial
The Court highlighted again the principle of 'front-loaded' proceedings by excluding late-filed prior art (documents 'Menot' and 'Lieberman') and invalidity arguments. This emphasizes the importance of Rules 13 and 44 RoP, requiring parties to present their complete case early on for procedural efficiency and fairness.
Added matter assessment
The Court rejected the added matter objection, finding that the disputed feature (feature 1.5) was sufficiently disclosed in the initial application, thus complying with Article 123(2) EPC. Particularly, the Court held that feature 1.5, which was introduced into the claim and another feature, which was ommited, were "not related one to the other" (mn. 54) so that the intermediate generalization was deemed admissible.
Inventive step assessment
'Diaz' describes a medication delivery system with a flexible reservoir and a pump assembly. The Court identified that 'Diaz' did not disclose feature 1.3iii, as the figures showed a gap between the flexible reservoir and the rigid structure, indicating no limitation on the reservoir's expansion. The Court also noted that 'Robertson', which relates to a container for solid medicaments, did not provide any suggestions to modify 'Diaz' to include the missing features. The combination of 'Diaz' and 'Robertson' was deemed insufficient to affect the inventive step of claim 1.
The Court reiterated that neither 'Glejboel', 'Diaz', nor 'Robertson' disclosed feature 1.3iii. Consequently, the combination of these documents could not affect the inventive step of claim 1.
2. Division
Central Division Paris
3. UPC number
UPC_CFI_454/2023
4. Type of proceedings
Decision in revocation action
5. Parties
Tandem Diabetes Care Europe B.V., Tandem Diabetes Care,
Inc.
vs.
Roche Diabetes Care GmbH
6. Patent
EP 2 196 231 B1
7. Body of legislation / Rules
Article 47 of the Charter of Fundamental Rights of the European Union
Rule 13 RoP
Rule 19 (1) (b) RoP
Rule 44 RoP
Rule 48 RoP
Rule 333 RoP
UPC_CFI_454_2023_CD_Paris_December_18_2024_inventive_step_EP_maintained Download
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