In a detailed judgment, the Milan branch of the Central Division confirmed the validity of EP 3 756 767 B1, relating to an automated immunoassay instrument, and maintained the patent in the form of Auxiliary Request 3.
The Court found: filing around fifty separate validity attacks “is not compatible with the resources available to the Court” and “suggests a lack of strategy”. Under Rules 262 and 263 RoP, the panel required bioMérieux to identify its most promising novelty and inventive-step attacks, limiting the discussion to a maximum of two and three documents respectively. Once those failed, all other attacks were deemed likewise unsuccessful.
From a practical perspective, I can follow the Milan Central Division’s approach to a certain degree. It promotes focus and procedural efficiency. Yet, such strict streamlining would on the other hand require giving the revocation claimant greater flexibility later in the proceedings. If, for instance, the Paris Central Division (cf. UPC_CFI_263/2023, decision of 29 July 2024) does not allow an attack against a claim amended based on the description – arguing that the same objection could already have been raised against the claims as granted – this approach becomes problematic.
In assessing inventive step, the panel reaffirmed that the problem–solution approach “can be followed … as a tool”, yet “nothing prevents the Court from following a different approach”. In practice, it applied a broad, pragmatic obviousness test focused on whether the skilled person would be motivated to combine prior-art systems.
