In a counterclaim for revocation relating to EP 2 671 173, the Paris seat of the Central Division revoked the patent in its entirety. The Central Division drew a clear line on how auxiliary requests must be drafted and presented under Rule 30 RoP. Proposed amendments must be immediately intelligible without the Court reconstructing the patentee’s intent, and substantive amendments generally require a complete amended claim set filed within the Rule 30 deadline.
The most practitioner-relevant part of the decision is the structured treatment of Rule 30 RoP and the practical consequences for drafting.
The Court confirmed that the defendant in a counterclaim for revocation is entitled to amend the patent, provided the application is included in the statement of defence (or otherwise meets the filing deadline) and contains the information required by Rule 30 RoP. It distinguished between objective and discretionary requirements.
It treated the following as objective admissibility conditions: (i) compliance with the filing deadline, (ii) inclusion of at least one amendment, and (iii) formulation in the language of the patent. Failure on these points leads to inadmissibility.
By contrast, the Court viewed clarity and intelligibility of the amendments, the sufficiency of the explanation as to compliance with Art. 84 EPC and Art. 123(2) and (3) EPC, and the “reasonable in number” requirement as matters of judicial discretion. Importantly, the Court stated that where these discretionary requirements are not met, it may decline to examine inadequately formulated or explained amendments, or amendments that are excessive compared to the number deemed reasonable.
The Court’s central drafting message is that amendments must be presented so that both the Court and the counterclaimant can immediately understand what the claims would look like if maintained in amended form. The Court linked this to three procedural principles:
On that basis, the Court stated a general rule: mere deletion of claims may not require a consolidated document, but any substantive amendment generally requires submission of a full set of amended claims. Crucially, that full claim set must be filed together with the amendment application (or at least within the same Rule 30 deadline), not later in the reply/rejoinder cycle.
Applying these principles, the Court held that the application to amend was timely and, from an objective perspective, admissible. The number of auxiliary requests was also not regarded as unreasonable given the complexity of the case. The problem was the formulation.
Auxiliary Request I was accompanied by a corresponding reformulated set of claims and was therefore properly filed. By contrast:
Accordingly, only Auxiliary Request I was examined on the merits.
The Court applied the “directly and unambiguously derivable” standard (including implicit disclosure) and reiterated that the removal or replacement of a feature is not added matter where the feature is not described as essential, is not indispensable to the function of the invention, and no real modification of other features is required to compensate.
The Court held that the patent as granted extended beyond the content of the application as filed in two distinct ways.
First, it accepted Microsoft’s submission that the application as filed disclosed location being obtained from Wi-Fi identities (a specific mechanism) rather than “Wi-Fi” in the broader, technology-agnostic sense used in the granted claim. In the Court’s view, “location acquired from Wi-Fi” covers embodiments (for example, location inferred via messages received over a Wi-Fi network) that were not directly and unambiguously disclosed. This was treated as an intermediate generalisation.
Second, the Court rejected that the original disclosure supported the simultaneous or combined use implied by “Wi-Fi, GPS, and/or cellular network”. The application as filed described alternative techniques and, where multiple techniques were mentioned, did so in an order of precedence rather than in combination. The granted wording was therefore too broad.
The Court found an additional added-matter defect in the ranking logic. It considered that the granted wording entails a comparison which, on the Court’s reading, juxtaposes time-dependent click-through rates (at the time of the query) against low click-through rates not defined by time in the same way, whereas the application as filed disclosed click-through rates stored as a function of location or time rather than the claimed comparison structure. The Court therefore concluded that claim 1 also extends beyond the application as filed in this respect.
