2024-11-05 - CD Paris - NJOY v. Juul Labs - UPC_CFI_309/2023

1. Independent of an application to amend the patent as may be filed by the patent proprietor (R 50 (2) RoP) the Court, according to Art. 65 (3) UPCA, limits the patent by a corresponding amendment of the claims and revokes it (only) in part 2. According to the dispositive principle (procedural maxim) a dispute before the Court generally is controlled by the parties; Art. 76 (1) UPCA rules that the Court shall decide in accordance with the requests submitted by the parties. By the sequence of its requests a patent owner as Defendant to a revocation action may indicate that it requests the Court to consider its application(s) to amend the patent prior to the evaluation, if the patent as granted shall be revoked in part and limited by a corresponding amendment of the claims. 3. Art. 65.3 UPCA only pertains to the granted patent. Art. 65.3 UPCA contains no obligation to the Court to evaluate, if an application to amend the patent filed by the patent owner can be allowed in part. Within an application to amend the patent a certain claim set is either allowable (as such; the complete claim set proposed) or not. 4. The claim interpretation to be performed by the court is a question of law for the Court. The Court performs it at any stage of the proceedings.

The Paris Central Division granted the revocation action in this case and revoked the patent for a list of territories. The court dealt with the sequence of submissions in a revocation action and whether documents filed late into the proceedings were to be admitted.