2024-11-05 - CD Paris - NJOY v. Juul Labs - UPC_CFI_315/2023

1. An objective approach must be applied to the evaluation of the requirements of Art. 56 EPC (inventive step). 2. The reference to the person skilled in Art. 56 EPC is an element of this objective approach. Subjective considerations or the subjective knowledge and skill of individuals, like the named inventor(s) or the parties to the case, do not have an influence on the evaluation of inventive step. 3. The reference to the state of the art in Art. 56 EPC, which according to Art. 54 (2) EPC shall be held to comprise everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing (or the earliest priority date (Art 89 EPC)) of the European patent application, is a further element of this objective approach. In general, an invention shall be considered as involving an inventive step if, having regard to any element that forms part of the state of the art, it is not obvious to a person skilled in the art. It is, however, Claimant that defines the scope of evaluation for a revocation action. The Court does not evaluate reasons for revocation that the Claimant has not raised. 4. The reference to an inventive step (“erfinderische Tätigkeit” in the German version of Art 56 EPC; “une activité inventive” in the French version of Art 56 EPC) indicates that what is to be evaluated under Art 56 EPC is an activity, that can be motivated by an underlying problem. It is decisive, whether what is claimed as an invention did or did not follow from the prior art in such a way that the skilled person would have found it in his attempt to solve the underlying problem on the basis of its knowledge and skills. 5. Under the front-loaded system of UPC proceedings, parties are under an obligation to set out their full case as early as possible. A failure to do so may lead to the exclusion of arguments. However, in order to secure fairness and equity of the proceedings (Preamble RoP 5), if a party, in its first submission, raises an argument and the other party takes issue with this argument in reply, the party may further substantiate its initial argument in its second submission.

In this decision on a revocation action, the Paris Central Division held the patent valid and dismissed the action. There is detailed reasoning regarding the requirements of Art. 56 EPC (inventive step). Additionally, the court touches on the requirement for the parties to lay out their full case as early as possible and when "late arguments" should be considered by the court.