1. Key takeaways
Strict Application Principle for Amending Patents in Defense Against Revocation
Art. 76 (1) UPCA contains a strict application principle. Accordingly, a patent proprietor, who wishes to defend its patent in a limited version, has to submit a clear and comprehensive Application to amend the patent. This includes situations where the proprietor wishes to rely on a dependent claim as granted as a new independent claim.
The application must specify the desired amendments to the claims and/or specification, including alternative sets of claims (auxiliary requests) and their order.
The UPC has no jurisdiction over a European Patent with regard to those national parts of UPCA member states which have already lapsed before 1 June 2023. The same applies to national parts of non-UPCA-member states
Without prejudice to Art. 83 UPCA, Art. 3 (c) UPCA vests upon the UPC jurisdiction over any pre-existing European patent which has not yet lapsed at the date of the UPCA's entry into force, i.e., 1 June 2023. The provision has to be interpreted autonomously in accordance with the Vienna Convention on the Law of Treaties (VCLT). Thus, the court interpreted "any European patent" in Art. 3(c) UPCA as "any national part thereof" still in force.
This interpretation aligns with the UPCA's purpose of harmonizing future patent litigation and avoids retroactive effects on lapsed national parts.
Claim Interpretation Must Consider the Entire Patent Specification
Claim language should be interpreted in light of the entire patent specification, which serves as a lexicon for understanding the claims.
In the current case, the court corrected an obvious error in claim 6, replacing "<=" with ">=" based on the context of the claims and the description.
This highlights the importance of considering the specification when interpreting claims, even if the claim language appears unambiguous at first glance.
2. Division
LD Mannheim
3. UPC number
UPC_CFI_359/2023
4. Type of proceedings
Infringement action and counterclaim for revocation
5. Parties
Claimant: FUJIFILM Corporation
Defendants: Kodak GmbH, Kodak Graphic Communications GmbH, Kodak Holding GmbH
6. Patent(s)
EP 3 476 616 B1
7. Jurisdictions
UPC, Germany
8. Body of legislation / Rules
Art. 3, 65, 76 UPCA, Rule 30 RoP
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.
