2025-12-03 - LD Mannheim - Decathlon v. Lidl et al. - UPC_CFI_521/2024

Was ist diese UPC-Entscheidung?

Zusammenfassung: The Mannheim Local Division revoked EP 1 697 604 for lack of inventive step for Germany, Italy, Belgium, Portugal and Sweden and dismissed the infringement action in consequence, without deciding infringement. Its headnote settles where the burden lies once the patent as granted has fallen: the patentee must then prove that the amended version is new and inventive, because the amended subject-matter never passed through the granting procedure and the patentee is the applicant of the application to amend, while the revocation claimant carries only a secondary obligation to indicate why the amended patent is invalid as well. The Division extended that rule to an amendment that merely adds the features of a dependent claim, since the patentability of dependent claims is not necessarily examined independently during grant. On inventive step it applied the framework of the Court of Appeal in Amgen v Sanofi and of the Munich Central Division in Regeneron v Amgen: the starting point need not be the closest prior art, several suitable starting points may exist, and the solution is obvious where the skilled person would be motivated to take it as a next step. The decision is notable for departing openly from other tribunals on the same material — the panel found the disclosure of US 4 858 634 to differ fundamentally from what the EPO Board of Appeal held in T 2430/10 and what the Higher Regional Court of Karlsruhe held on the derived German utility model, and it declined to follow the Paris courts, which had considered claim 1 inventive over the very same combination.

Quelle und Fundstellen

Quelle: UPC Case File

Aktenzeichen: UPC_CFI_521/2024