2024-11-27 - CD Paris - NJOY v. VMR Products - UPC_CFI_308/2023

1. The Unified Patent Court legal provisions introduce the so-called ‘front loaded’ procedural system whereby a claimant is required to concretely elaborate his arguments and evidence in its first written pleading. However, these provisions must be interpreted in the light of the principle of proportionality, which requires that the parties should not be burdened with tasks that are unnecessary to achieve the stated objective, and in the light of the principle of procedural efficiency, which is contrary to excessive and overly detailed allegations of facts and production of multiple documents in relation to matters that can be presumed to be known to the opposing party and not to be disputed by them. 2. In revocation actions, the claimant is required to specify in detail the grounds of invalidity that allegedly affect the contested patent, as well as the prior art documents relied upon to support any allegation of lack of novelty or inventive step. Consequently, the claimant cannot introduce new grounds of invalidity of the attacked patent or introduce new documents considered novelty destroying or convincing starting points for the assessment of lack of inventive step in subsequent written acts. 3. In certain situation, following the defence raised by the defendant, the claimant may allege new facts and new evidence, insofar as they are considered capable of supporting the main facts already timely alleged and disputed by the defendant or the probative value of the evidence already filed. 4. While it is in general questionable that a particular published patent application or a patent specification can be considered as an indication of common general knowledge, however the statement of the author of the patent that a teaching is widely spread at the time can used as evidence of the fact that this teaching forms part of common general knowledge.

The Paris Central division revoked a patent in it's entirety. The defendant’s request for partial revocation of the patent was deemed admissible in principle under Article 65(3) UPCA, but it lacked clarity and justification. Furthermore, the proposed conditional amendments were considered unreasonable in number, violating procedural rules. The court further stated that in revocation actions, claimants must specify grounds of invalidity and supporting prior art at the outset and cannot introduce new grounds or documents later unless they support previously contested facts.