In this revocation action concerning EP 1 516 720 relating to composite elements containing a polyurethane adhesion promoter, the Central Division Paris addressed several noteworthy procedural and substantive issues.
Most notably, the Court confirmed that a revocation action may remain admissible even where the patent had already expired before the action was filed, provided the claimant retains a legitimate legal interest – for example because infringement claims for the patent term are still being pursued.
The decision also provides further insight into the UPC’s inventive-step analysis. The Court reiterated that it is not bound by the objective technical problem formulated in the patent itself, but may determine that problem independently based on the patent as a whole. In addition, the Court emphasised an important procedural limitation in amendment proceedings: when assessing auxiliary requests, it will consider only the specific invalidity attacks actually directed against the amended claims and will not automatically carry over objections raised against the granted claims.
A notable procedural issue was that the patent had already expired before the revocation action was filed.
The Court first clarified that legal interest forms part of admissibility and must be examined by the Court of its own motion. This issue arose because the patent had already expired when the revocation action was commenced. The reasoning suggests that expiry during ongoing proceedings would not, in itself, create a comparable admissibility issue.
The Court further held that expiry before filing does not automatically deprive a claimant of legal interest. Even after expiry, infringement claims may still be pursued for acts committed during the patent term.
That was precisely the situation here. BASF had already initiated ex parte evidence preservation proceedings before a Belgian national court and had announced damages claims relating to alleged past infringement. The claimants therefore remained directly affected by the patent despite its expiry.
The revocation action was accordingly held admissible.
On inventive step, the Court expressly confirmed the now familiar UPC approach.
Referring to the Court of Appeal’s framework, the Central Division reiterated that inventive step requires first identifying the objective technical problem by assessing the claim as a whole in light of the description, drawings, and the technical teaching of the patent.
Importantly, the Court stated that it is not bound by the problem formulation set out in the patent itself.
A particularly relevant procedural clarification concerns the treatment of auxiliary requests.
The Court expressly held that, when assessing amended claims, it is bound by the specific objections actually raised by the claimant against those amendments.
Invalidity attacks directed at the granted patent do not automatically carry over.
Here, Huntsman had attacked auxiliary request 1 only on selected grounds, including added matter, insufficiency, novelty, and inventive step based on specific prior art. The Court rejected those attacks and upheld the amended claims.
This is an important practical point for revocation claimants: objections against the granted claims should not be assumed to remain implicitly on the table once amended claims are introduced. Each auxiliary request must be specifically and fully attacked.
