2026-08-14 - CoA - Sibio Technology v. Abbott - UPC-COA-0000884/2025

1) One situation where added matter may arise is when claimed subject-matter is obtained by importing one or more features from a certain embodiment in the application into a claim, while omitting one or more other features of this embodiment which were presented in combination with the imported feature(s) in the disclosure of this embodiment. This is referred to as an ’intermediate generalisation’. This is generally considered to be unallowable if there is a clearly recognisable functional or structural relationship among the omitted feature(s) and the claim features, also referred to ’an extricable link’ between the omitted feature(s) and the claim features. 2) The technical effect that the invention aims to achieve, and whether an omitted feature contributes thereto, is relevant for the assessment of added matter. It is relevant when considering whether the skilled person would understand from the disclosure of the application as a whole that there is a structural or functional relationship between the omitted feature and the other features of the claimed embodiment or, in other words, when considering whether there is an inextricable link with such other features or, yet differently worded, whether such omitted feature is essential to the invention.

The Court of Appeal dismissed Sibio's appeal against the Paris Central Division's refusal to revoke Abbott's patent, upholding the patent as granted on both maintained grounds. On added matter under Art. 138(1)(c) EPC the Court held, in two headnotes, that an intermediate generalisation is unallowable only where a clearly recognisable functional or structural relationship — an inextricable link — connects the omitted feature to the claim features, and that the technical effect the invention aims to achieve, and whether the omitted feature contributes to it, is relevant to that assessment [33], [35]. It further held that the EPO's categorisation of the objection as an 'intermediate generalisation' or as an 'omission of an essential element' is irrelevant, because the only test is the gold standard of whether the claim covers subject-matter extending beyond the application as filed, and that R. 222.2 RoP does not bar a new legal argument on appeal that rests on the same facts and evidence [34]. Applying the Amgen v Sanofi & Regeneron inventive-step framework, the Court rejected the obviousness attack at the threshold: an embodiment that cannot be used to solve the objective problem is not a realistic starting point, so the attack failed before any combination question arose [71]. As the unsuccessful party Sibio bears Abbott's costs of the appeal [79].