UPC Munich Local Division takes a novel approach to claim interpretation (SES vs Hanshow, UPC-CFI-292/2023)

The decision of the Munich Local Division of the UPC in SES vs. Hanshow provides a first indication of how the nascent UPC will approach patent claim interpretation. Initial decisions from the UPC have been light on analysis of the relevant substantive legal provisions. The Munich Local Division in SES vs Hanshow took a rather peculiar approach to claim interpretation, for which this Kat struggles to find basis in either EPO or national case law. 

SES vs. HanshowCase background

The case (UPC-CFI-292/2023) heard by the Munich Local Division of the UPC, related to the alleged infringement of SES's patent EP 3883277 by Hanshow. The patent related to an electronic label for providing pricing information about a product to a consumer. SES submitted that Hanshow were offering for sale electronic labels falling under the scope of the granted patent. SES applied for a preliminary injunction at the UPC against Hanshow.

The Munich Local Division of the UPC were not convinced that the defendants were infringing the patent, and thus dismissed SES's application for interim measures. Key to the court's decision was the question of how the claims should be interpreted. 

Claim interpretation by the UPC 

The decision in SES vs. Hanshow does not indicate what law was applied for the purposes of claim interpretation. However, under Article 24 UPCA, the applicable laws for the UPC include the EPC and the national law of the contracting states.  

Claim 1 as granted claimed an electronic label comprising a printed circuit board (PCB) and an antenna (English translation). The parties disputed the way in which the location of the PCB and antenna should be interpreted from the claim. The claim required that:

  • The PCB was located in housing, "on the side of the rear surface of the housing". 
  • The antenna was located "on or in the housing on the side of the front surface of the electronic tag". 

The Patentee argued that a skilled person would understand both of these features in view of the disclosure of the patent as a whole. In particular, the Patentee argued that the skilled person would understand from the description and figures that the claims did not require the PCB to be in contact with or mounted directly on the housing. Instead, the PCB could be located slightly away from the housing, e.g. because of other components mounted on the housing. The defendants, by contrast, argued that the wording of the claim clearly required the PCB to be technically and functionally aligned with the rear side of the housing. 

Located in the housing 

With regards to the location of the antenna, the Patentee argued that it would be clear to a skilled person from the description and figures that the antenna had to be arranged in the front area of the electronic label in order to enable a reliable data connection. However, the Patentee argued that a skilled person would not infer from this that the antenna had to be arranged in front of all the other features, e.g. the display screen. The defendants argued by contrast that it would be clear to a skilled person that it was a core aspect of the invention that additional elements between the front surface and the antenna should be avoided as a matter of principle in order to achieve an optimal wireless connection. As such the antenna had to be positioned in front of the display screen. 

The Munich Local Division was of the view that the two features in questions had to be interpreted together. As explained throughout the description, both components were intended to interact technically. To the Munich Local Division, the claim was thus obviously an attempt to regulate the technically existing interaction between the PCB and antenna by the spatial arrangement of both components. 

Use of the application as filed and prosecution history in the claim interpretation

It is at this juncture that things start getting interesting. In order to guide its interpretation of the claims, the UPC Local Division looked to prosecution history. In particular, The Local Division, in order to elucidate the meaning of the granted claims, considered it appropriate to compare the granted claims with those as originally filed: "The original version of the claim, [...] can be used as an aid to interpretation in connection with amendments made during the grant procedure".

The original claims specified that the PCB and the antenna should be "at a distance" from each other. During prosecution, the claims were amended to further clarify this feature, by specifying that the PCB was located on the side of the rear surface of the housing, whilst the antenna was located on or in the housing at the front side. In view of these amendments, and the technical purpose of the features explained in the description, the UPC Local Division concluded that the antenna had to be arranged "without restriction and thus as a whole" on the side of the front surface of the electronic label. Similarly, the PCB had to be arranged in its entirety on the side of the rear surface of the housing. For the UPC Local Division, it remained an open question whether or not the antenna could be located behind the display screen, given that the claim did not establish an explicit spatial relationship between the screen and the antenna. 

The UPC Local Division were not convinced that the alleged infringing items fell under the scope of the claims as they had interpreted them. Importantly, in the alleged infringing product, a significant part of the antenna was allocated to the surface of the rear side of the housing. As such, the Local Division was of the opinion that the antenna could not concurrently be said to be "arranged on the side of the front surface of the electronic label". The Local Division thus dismissed SES's application for interim measures. 

The UPC adopts a novel approach to claim interpretation

Use of the original claims and prosecution history is not how the Boards of Appeal of the EPO generally interpret the claims of a granted patent. On the contrary, recent Board of Appeals have ignored everything other than the patent as granted (T 450/20, IPKat). 

Admittedly, however, there is currently disagreement among the Boards of Appeal as to the correct approach to claim interpretation. As recently reported on IPKat, a EPO Board of Appeal is currently poised on the brink of referring on this very question to the Enlarged Board of Appeal (EBA) (T 439/22IPKat). Notably, in its preliminary opinion, the Board of Appeal in T 439/22 argued that a referral was needed given that a point of law of fundamental importance had arisen (Article 112(1) EPC): "a narrow interpretation of the claim language ignoring a definition giving [sic] in the description would [...] conflict with a broader interpretation by national courts or the UPC when having to deal with the granted claim later during the live [sic] of the patent". Interestingly, if the UPC routinely begins to use the application as filed and the original claims to aid claim interpretation, this would also greatly undermine the EPO's insistence that alignment between the description and the granted claims is needed in order for the granted claims to be clear (IPKat). 

However, even though the correct way to interpret claims at the EPO requires some clarity, this Kat is not aware of Boards of Appeal case law supporting the use of the original claims as a guide to claim interpretation. This approach to claim interpretation taken by the Local Division is not only out of step with the EPO. The Munich Local Division of the UPC in SES vs. Hanshow also departs from the general approach to claim interpretation taken by the national courts of UPC states. In Germany, for example, prosecution history should not used for claim interpretation, i.e. there is no file wrapper estoppel (Kunststoffrohrteil, X ZR 43/01) (although prosecution claim amendments may possibly be taken into account for consideration of infringement by equivalence). For further analysis of the contrast between SES vs. Hanshow and the German national courts' approach to claim interpretation see Dr Michael Wallinger's EPLIT blog

The decision of the Munich Local Division of the UPC in SES vs. Hanshow therefore appears to ignore the normal principles of claim interpretation under the EPC and national law, even taking into account the current uncertainty about claim interpretation at the EPO. 

Final thoughts

Decisions from the UPC Local Divisions have thus far lacked substantive evaluation of the relevant legal principles on which the orders have been made. The decision in SES vs. Hanshow, for example, does not mention what legal provisions and case law are being applied to the question of claim interpretation. Therefore, even if we get clarity from the EBA on the correct approach to claim interpretation at the EPO, it is unclear whether the UPC Local Divisions would take any notice. Whilst the UPC is still very much in its infancy, the application of substantive patent law apparent in SES vs. Hanshow is not conducive to legal certainty. We now await to see if SES will appeal the decision to the UPC Court of Appeal. 

Many thanks to Katfriends at Taylor Wessing (who acted for Hanshow) for providing IPKat with an English translation of the decision. 

Update: Katfriend Greg Corcoran has now helpfully provided a potential explanation for the Local Division's approach. Greg points out that file wrapper estoppel is well established law and practice in the Netherlands, as it is in the US. Notably, the Legally qualified judge in this case (Margot Kokke) was formally an IP lawyer in private practice in the Netherlands. 

For this Kat, perhaps then the lesson from this decision is that the UPC Local Divisions are likely just to apply the national law with which the legal judge is most familiar. Is this approach conducive to the legal harmonisation to which the UPC is meant to contribute? At the very least, it would helpful if the judges of the UPC were more transparent with respect to the law they are applying. 

Further reading
UPC Munich Local Division takes a novel approach to claim interpretation (SES vs Hanshow, UPC-CFI-292/2023) UPC Munich Local Division takes a novel approach to claim interpretation (SES vs Hanshow, UPC-CFI-292/2023) Reviewed by Rose Hughes on Sunday, January 07, 2024 Rating: 5


  1. Rose it most definitely will be "interesting" if the UPC routinely takes into account what is in the application as filed and what is in the prosecution history. Is this not what every competitor of the patent owner has always done, when trying to figure out whether it infringes the patent? Isn't that what any sensible person would do? Why not the court too, I wonder?

    Which is not to say that the EPO is wrong to insist that no claim is fit for grant until it is i) clear in itself and ii) supported by the disclosure of the application as filed.

    I remember starting as a newbie TA in a London firm of patent agents and struggling to distinguish between the concepts of what a patent application discloses to its skilled reader, and what it covers. Since then, I had thought that only new entrants to the profession have this difficulty. I hope I am right about that. But I'm beginning to have my doubts.

  2. This is a fascinating mistake by a new court which has jumped straight into developing a new philosophy of claim interpretation. The dangers of doing so should have been apparent, but clearly not. They are trying to figure out the 'derivation' of the granted claim language, and what factors led to amendment of the original claim. This ignores all aspect of interpretation of the granted claim 'in vacuo', and brings in many additional assumptions/reasons/intentions into the claim language which materially affect the claim scope for validity and infringement. There are in reality two claim scopes now (not including equivalence), one literal and one limited by a technical effect reflecting arguments used in examination, and infringement must be judged in respect of both. The court really has no idea of the Pandora's boxes and cans of worms it is opening, and of course how can it when it is a 'baby court' finding its way? We are all privileged to see development of a new court from an embryonic stage, and it will be fascinating to observe it learning from its own mistakes

  3. Patent EP3883277 was indeed granted with unitary effect.

    EP3883277 stems from a divisional application of EP12762019/EP 2 837 212.

    A look in the register shows that, following the request for a PI at the Munich local division, the patent has been opposed by Hanshow, requesting revocation in totality. In its opposition, Hanshow mentions the request for PI before the Munich local division of the UPC. The proprietor has not yet replied.

    It is indeed surprising that the local division of the UPC does not refer to Art 69 in order to interpret the independent claim and define its scope of protection.

    I am however not completely surprised at the turn of events, as at the conferences on the UPC held a few years ago on the premises of the EPO, the idea of looking a the file history was not dismissed at once. This woud certanly allow the UPC to distinguish itself from the bords of appeal of the EPO and of national courts.

    One immediate conclusion is that the Court of Appeal of the UPC will have a lot of work, should each division of the UPC come up with its own way of interpreting claims. If I am not mistaken, the UPC was set up to bring about some harmonisation, not to increase legal uncertainty.

    I would rather be of the opinion that if the UPC routinely begins to use the application as filed and the original claims to aid claim interpretation, this would not undermine the EPO's insistence that alignment between the description and the granted claims is needed in order for the granted claims to be clear. On the contrary, this would be the only way to bring in some certainty.

    After all, what matters for the EPO is the EPC and not some interpretation of claims given by a new court. The EPO abides by the EPC. Art 84 EPC has two aspects, clarity in the etymological meaning of the term, as well as support of the claims by the description.

    If the UPC would use the application as filed and the original claims to aid claim interpretation, then what would also be useful is for the EPO to publish the "votum", i.e. the reasons as to why the EPO has decided to grant a patent.

    When an application is refused, the reasons for refusal are public. Why should this not be the case when a patent is granted?

  4. Is it a shock the UPC is not looking to EPO case law? Whilst the EPC and national law are (tiered) applicable law in that order, this only brings in the text of the law itself and none of the additional "customary" parts of EPO practice. So, for instance, the guidelines and case law do not form part of the applicable law that can be pulled through...only the EPC. As we know historically with selection inventions in Germany versus at the EPO, identical legal text can end up leading to very different outcomes through the interpretation even for something as fundamental as novelty.

    I think there will be interesting times ahead for this and more surprise from parties who assume it will just be the EPO+. One area in particular, inventive STEP, there may be some shocks - as we all know, the problem solution approach isn't enshrined in the text of the EPC so there can be no assumption this is how the validity of parents in view of the prior art will be assessed at the UPC. They may well develop their own entirely new test, only time will tell.

    1. @ It's civil law

      I can only but agree with you that what matters is what is in the EPC and “none of the additional "customary" parts of EPO practice”, like problem solution approach solution when it comes to assessing IS. The PSA is no more than a tool, albeit a quite useful one.

      The problem I see is a potential conflict of jurisprudence between the UPC and the BA/EBA of the EPO in matters of validity.

      The problem is that, for historical reasons, the EPC provides for the granting of the title and it is up to the national courts, or now the UPC, to decide on infringement and, where appropriate, validity. There is a real risk of conflicting decisions on validity between the UPC and the BAs. Some national courts do not follow the case law of the BAs and the EBA, or claim that they do, but do exactly the opposite.

      A European patent, with or without unitary effect, is a patent granted by the EPO. Its divisions of first instance are bound by the decisions of the EBA. They are only bound by the decisions of the BAs insofar as these are included in the Guidelines. The BAs are only bound by decisions of the EBA. UPC supporters would like the BAs and the EBA to follow UPC decisions, but I don't think they will. Only intense political pressure from UPC supporters could bring them to heel. I refer here to comments of Sir Robin Jacob during a conference held at UCL and commented in another blog.

      It should not be forgotten that a final decision by the EPO after an appeal on opposition takes precedence, whatever the UPC might have decided on validity. If the patent is revoked, it is revoked for all the EPC Contracting States for which it was validated. The same applies if the patent is maintained in amended form regardless of the decision on infringement or validity taken by the UPC. The infringement may even lapse.

      It appears therefore advisable to file an opposition before the EPO. It is also much cheaper. The fact that this takes time is due to the procedural deadlines set by the EPC. Opposition at the EPO is certainly not waiting for Godot.

      Some opponents, particularly in the pharmaceutical field, are not unhappy that the opposition procedure before the EPO takes a certain amount of time; it allows everything to simmer to the great detriment of the proprietors. See again the comments in another blog on the same UCL conference.

      The UPC wants, at least in the first instance, to give a decision within 12 months of filing a request/application. To avoid conflicts of jurisprudence, it must not confuse speed with haste.

      We live in interesting times!

  5. For any decision of any court, it is essential that, as a first step, the court identifies (and, if necessary, interprets) the law(s) that will provide the legal basis for their decision. There are of course many examples of courts omitting to provide an explanation of the conclusions that they reached in this first step. However, this typically only happens when the relevant laws are long established and well known to all parties.

    In this respect, I find it frankly astonishing that, as a brand new court founded upon a largely untested legal system, the Munich LD chose not explain which laws (governing infringement and claim interpretation, etc.) formed the legal underpinning for their conclusions.

    This is all the more astonishing given that it is far from clear which national law (according Article 5.3 of Regulation 1257/2012) determines the acts against which a unitary patent provides protection.

    From this perspective, the Munich LD's failure to address the legal basis for their decision looks at best ill-advised, if not amateurish.

    1. @ Proof of the pudding

      We might have disagreed on various topics, but in the present situation, I am fully with you.

      If the legislator had wanted to take account of the file history, he would have stated this clearly. It is manifest that the fathers of the EPC did not want a US-style file wrapper estoppel. It is not up to a local division of the UPC to introduce this concept through the back door.

      Art 69 and its implementing protocol were placed in the EPC to meet interpretation needs, particularly for national courts or the UPC.

      In a comment on another blog, I have added the following: It should not be left to local divisions to dispense with the normal rules of interpretation of claims or of the EPC, and certainly not allow them developing rules which might please one or the other head of a local division.

    2. We do indeed seem to be in agreement on this occasion. I think that this happens more often than you might realise. I still live in hope that we can somehow find common ground (if not complete agreement) on the topic where our views seem to differ quite sharply.

      For me, the biggest failing in the Munich LD's decision is the failure to identify the national law that determines the acts against which a unitary patent provides protection.

      It is essential for the profession, and for the broader public, that we gain an understanding of how the UPC will interpret Article 5.3 of Regulation 1257/2012. This is not least because there will undoubtedly be cases in which the parties will be very keen for the UPC to rule upon this issue. Indeed, it is easy to envisage cases in which the selection of one national law over another might determine the outcome. For example, where the so-called "Bolar" exemption might provide a defence to infringement, patentees will want the UPC to select a national law having a narrow Bolar, whereas the alleged infringers will instead want the UPC to select a national law having a broad Bolar (eg German national law).

      I cannot recall whether the interpretation of Article 5.3 of Regulation 1257/2012 has yet been pertinent to any other cases before the UPC. However, given the thorny issues that it throws up, I suspect that most divisions of the court will follow the Munich LD's example ... by avoiding, for as long as possible, any attempts to interpret that provision.

  6. There is basis in *national* case law, perhaps not in German case law.

    In Belgium, claim interpretation based inter alia on amendments during prosecution was accepted by the Cour de Cassation in Saint-Gobain v Knauf (C.14.0098.F/22, judgment of 12 March 2015).

    In the Netherlands, although this is not my home jurisdiction, I believe the Hoge Raad set the same standard in Dijkstra v Saier (ECLI:NL:HR:2006:AZ1081, judgment of 22 December 2006).

    1. In the Netherlands, Dijkstra/Saier is still good law, and allows third parties (i.e. alleged infringers) to invoke the file wrapper; the proprietor can do so only in limited circumstances (to argue a broader claim interpretation).
      Possibly, file wrapper estoppel also exists in UK law, eg. Eli Lilly v Actavis ? [2017] UKSC 48.

    2. FWE - the recent conclusion of the Advocate General to the Dutch Supreme Court (ECLI:NL:PHR:2023:1123) indicates that the prosecution history is not regularly used in UK and is controversial in DE case law (X ZR 29/15, GRUR 2016, 921 (Pemetrexed),) and that the situation in FR is unclear.

  7. @It's civil law

    Given the relatively high rate of direct revocation actions already before the UPC, it is likely the UPC will be able to develop its case law regarding validity conditions fairly quickly. If the UPC strikes down a patent and an opposition is pending before the EPO, what can happen ? It will seem difficult for the EPO to maintain a patent revoked by the UPC.
    As to whether it will be aligned on the case law of the EPO, on the PSA and many other issues, on the one hand it would be logical not to reinvent the wheel, and practitioners are well aware of the case law of the EPO. But on the other hand, the creation of the UPC is a historical achievement for Europe, the judges will make history as well, and I guess the UPC judges will likely be bent on defining their own case law and assert their primacy in the European patent arena.

    1. Dear Mr Hagel,

      Why should it be difficult for the EPO to maintain a patent revoked by the UPC?

      This can only happen if the same prior art and the same interpretation of the prior art is to be found in the respective decisions. With a different prior art it is clear that we can arrive at different decisions. This will also be the case with the same prior art but with a different assessment of it. In both of those situations we can well arrive at contradictory decisions.

      Conversely, it might well be that a patent is considered valid and infringed at the UPC will be revoked or maintained in a more limited form after concurrent opposition at the EPO. The amended form could possibly allow escaping infringement. Here again, we will end up with contradictory decisions.

      All supporters of the EPC, e.g. Sir Robin Jacob at a recent panel discussion at UCL, wish that the latter will assert its primacy in the European patent arena in matters of validity. Nothing is more certain as a patent with or without unitary effect will be prosecuted under the case law of the EBA and of the BA. That different courts might have different views is nothing new under the sun.

      The potential of contradictory decisions has been largely underestimated when the UPC was set up. The aim of the UPC is, at least in first instance, to come with quick decisions, whereas for good reasons it takes more time at the EPO. The potential of contradictory decisions is thus built in the UPC system.

      Amongst a host of other unresolved issues, it's the original sin of the UPC.

  8. No one has mentioned 'added matter' in their comments, but I am hopeful the UPC will develop a philosophy closer to the lenient tests used in national courts. It is difficult to exactly state the UK courts' philosophy, but it seems to be a 'new information' test rather than what is disclosed directly by the words of the patent or complex imagined combinations of features. I hope the UPC will consider added matter the preserve of the EPO, and once a patent is granted by the EPO added matter no longer needs to be assessed with the same strictness as the EPO. I think that is a sensible approach given that added matter is really a 'formal' issue rather than a substantive issue, but at the moment I fear the UPC is being a little too experimental to really be conscious of how it wants to develop its case law. I believe it would not be helpful for the UPC to directly adopt the EPO's tests for added matter.

    1. Dear Santa,

      When complaining about the stance adopted by the EPO and the BA/EBA in matters of added matter, it is often forgotten, that novelty and added matter are the two faces of the same coin. The case law of the EBA has the merit to be coherent and understandable.

      What is gained on the one side is lost on the other. When in the prior art a lot of selections, without any pointer, are needed to come to the subject-matter of a claim, the subject-matter of it is novel. In the absence of a pointer it might most probably be inventive as there is no reason to end up with the claimed selection of features. In this respect it was good that the criteria of “purposive selection” when selecting a small range among a larger one, has been removed from the novelty criterion.

      Why should “added matter no longer needs to be assessed with the same strictness as the EPO”? Added matter is by no means a mere 'formal' issue, rather than a substantive issue. If there is a substantive issue next to novelty and inventive step, it is certainly added matter.

      Why should third parties hampered by a proprietor trying to bring in the claims, something he had not thought of it originally? That it might be obvious for a person skilled in the art to combine distinct embodiments might be true, but why should it be accepted after filing or grant?

      It remains to be seen whether the UPC will adopt the EPO's tests for added matter. That we will end up with contradictory decisions between UPC and EPO in this matter is to be expected, as we have experienced it with the German Federal Court (BGH). For first instance divisions and the BA, the case law which matters is that of the EBA and not that of the UPC.

      A patent opposed might be revoked by the EPO whilst the UPC consider it valid. Contrary decisions between the UPC and the EPO on this topic are more than probable. As the reach of the EPC is much wider that that of the UPC, case law of the EPO in matters of validity should have pre-eminence.

    2. Thank you DXThomas. In terms of national court practice I am only really familiar with the UK. In EPO opposition added matter is a very powerful attack and is often used. In UK court proceedings it is very rarely an issue, and the focus is more on other substantive issues. I believe that is true for other European national courts also. That is just how courts work. They sort of assume the relevant patent office has done the basic formal part of getting to a valid patent, and they take it from there. The UPC is a court, not a patent office, which is why I think added matter will not be very relevant there. If added matter does become important at the UPC it will mean the UPC is behaving differently to other courts, and that would be unfair to litigants. My previous comment on this was simply to point out that the UPC cannot wholesale import all case law from the EPO. There are issues where it would be inappropriate to do so.

    3. Added-matter is indeed a powerful attack in opposition at the EPO. When looking at national case law, it is manifest that the way added-matter is handled is quite different, actually more lenient.

      The EPO as granting authority is bound by the case law of the BA/EBA. Before obtaining a European patent with or without unitary effect, the first instance divisions will apply the Guidelines and the case law of the EBA. It might thus happen, that a patent is not even granted due to added-matter.

      In case of a parallel opposition and infringement/validity litigation at the UPC, we might end up with contrary decisions between the BA/EBA of the EPO as to the validity. The UPC might consider the patent valid, not having problems with added-matter, and infringed, whereas at the end of the opposition procedure, the patent might be revoked by the BA for added-matter.

      Nobody has ever required the UPC to wholesale import all case law from the EPO. There are however strong supporters of the UPC, for instance Sir Robin Jacob, who press the EPO to accept the case law of the UPC. I doubt that this will ever happen.

      When you look at the case law of the BA/EBA, the reasons for the very strict approach in added-matter, it is clear that applicants/proprietors would be unduly advantaged if added-matter would be tolerated, and this would be unfair to third parties. Coming up with fairness for litigants is thus not convincing at all.

      The UPC is already advantaging litigants as the basic fee for infringement is much lower than that for a nullity action. There is no reasonable explanation for this discrepancy in basic fees.

  9. Reviewing all the comments leads to quite a negative picture of the UPC. However I think it is worth pointing out that certain strands of jurisprudence theory say that law has to evolve through a certain level of experimentation and that must inevitably go beyond established case law and precedence. Therefore I do not believe that the UPC is obliged to point out the legal precedents it is following or which national court approaches it bases its decision on, and the advantage of this is that it allows free thinking and experimentation to happen. Of course experimentation is a painful phase, but there is no way of avoiding that. [I am not disagreeing with any previous comments, but merely providing some counterbalance]

    1. Santa, the job of a court is to take the facts of a case and the laws relevant to that case and then determine what the laws say the outcome should be. In this respect, a court skipping the step where the relevant laws are identified, as well as the later step where those laws are interpreted, seems to me to be a pretty serious failing.

      If the facts of the case were converted into an examination question, I cannot imagine that any examination board would award a pass mark to a candidate who assessed claim interpretation and infringement in the same way as the Munich LD. If you fail to show your working then you cannot expect to receive high marks from those who review your end product.

      The LD may indeed have taken a refreshing / innovative / surprising approach to the task at hand. However, failing to show their working they means that they will fail to inspire (widespread) confidence in their conclusions. That is not a good look for a court that is in its infancy.

    2. I don't disagree Proof of the Pudding, but in recent decisions the EPO has redefined priority requirements and also use of post-filing data to support credibility/plausibility. Self-opposition has gone, a while ago. Plant varieties, essentially biological processes, computer programs all have lots of twists and turns in the evolving of their case law. Here the 'laws' that governed what was happening or could happen, were not strictly adhered to, and I believe EPO case law has ultimately benefitted. The 'law' is not absolute, but its change and evolution is very messy. My comment is simply a footnote to what has been said in other comments here, and I do not disagree with the fact that risks are being taken by the UPC in its approach. But at the same time the UPC should not be strait-jacketed into existing 'law'. For a new pan-European patent court it might be better to start afresh.

    3. Santa, you are essentially arguing that, where they feel that there is a good reason for doing so, judges should be able to effectively (re-)write the laws. You will forgive me if I strongly disagree with that argument, which I see as nothing other than a call to trash the separation of powers principle.

      In this regard, I find it interesting that, by mentioning both plant varieties and the possibility for the law to "evolve", you make an oblique reference to G 3/19. To my mind, that was the absolute worst EBA decision ever, precisely for the reason that it trashes the separation of powers principle. The concept of a "dynamic" interpretation was mangled so badly in G 3/19 that its true purpose is easy to discern, namely the provision of an excuse, no matter how implausible, for the EBA to condone an administrative power-grab that, to all intents and purposes, represents a triumph of politics over the rule of law.

    4. Thank you for replying Proof of the Pudding. That is very appreciated. Jurisprudence theory recognises that laws need to evolve, and that 'evolution' is a good way of getting the optimal laws. The UPC judges may have a tacit agreement they will allow this to happen, say for 5 years, and jurisprudence theory would say that the benefits outweigh the costs of 'mistakes' in the initial phase. That is how every sphere of law works, and patent law is no different. Unfortunately of course the UPC judges cannot discuss this openly, but I am just saying that could be happening. There is no escaping how 'law' works, and my aim here is just to give another perspective, and not present what is right or wrong.

  10. @Santa

    I do not think my comment was negative. I agree with you that the UPC is bent on creating its own case law and this involves experimentation.

    I disagree with the opinions which exclude any prosecution estoppel because it is not mentioned in Art 69 EPC. It is entirely legitimate for judges to consider the general principle of law which underpins the prosecution estoppel (« Non concedit venire contra factum proprium »).

    I personally view the decision as quite positive. There is a divide between European national courts on prosecution estoppel when claims have been amended to overcome the prior art, it is accepted by Dutch and French courts and not by German courts, generally considered patentee-friendly. The UPC decision implies progress toward harmonisation on this sensitive issue in Europe.

    It is also positive in that the German judges of the Munich LD have departed from the German patentee-friendly doctrine and asserted their independence.

    So far, two thirds of all UPC cases have been brought before the German LDs, 50% before the Munich LD alone. This forum shopping is likely based on the patentee-friendly perception of German judges. The present decision, if confirmed, is a warning to patentees that they should not rely on this perception.

    1. Before we can say what the case law of the UPC will be, we will have to wait until the Court of Appeal gives a series of decisions. This will take some time.

      German judges of the Munich LD might have departed in a single case from the German patentee-friendly doctrine and asserted their independence, but this does by no way mean that it will be the position of th UPC as a whole.

  11. Do anyone know if there has been filed an appeal on the matter?


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