The Hague Division of the Unified Patent Court Emphasizes EPO's "Gold Standard" in Added Matter Decision and Finds (Unallowable) Intermediate Generalizations

In a recent order from the Local Division of The Hague, the Unified Patent Court (UPC) applies the practice of the European Patent Office (EPO) regarding added matter. The court applied what is referred to as the "gold standard" for assessing added matter, which means that any amendments to a European patent application must be directly and unambiguously derivable from the application as filed, using only common general knowledge as of the filing date.

Background of the Case
The case centered on a request for provisional measures related to European patent EP3831283, held by Abbott Diabetes Care Inc. The patent describes an on-body device for glucose monitoring, incorporating specific technical features regarding the device's assembly and sensor integration.

Court's Findings on Added Matter
The court decisively denied the application for provisional measures, primarily because it deemed the patent more likely than not to be invalid due to added matter issues. This decision hinged on a thorough examination of the original and divisional patent applications compared to the granted patent claims. The court noted an "unallowable intermediate generalization" in the patent claims, which did not meet the stringent requirements set by the EPO's established practice.

The concept of "unallowable intermediate generalization" occurs when a patent claim introduces a generalization of a specific embodiment or feature that was not clearly and unambiguously disclosed in the original application. Here, the claim under scrutiny involved details of the device’s enclosure and sensor assembly that were not fully supported by the initial application's disclosure.

Application of the EPO's "Gold Standard"
In its detailed assessment, the court applied the EPO’s "gold standard" for evaluating added matter, which implies that the content of the patent as granted must not extend beyond what was originally disclosed in the application. This standard intends to ensure that the patent does not confer an unjust scope beyond what the inventor originally disclosed, thus maintaining legal certainty for third parties.

The Hague Division’s reliance on EPO jurisprudence includes a central and rather famous part of the book “Case Law of the Boards of Appeal of the EPO” (CLBA, II.E.1.9.1, especially 4th and 5th paragraphs). Precisely the Division holds: “For the intermediate generalization to be considered allowable (in the sense that it does not result in added matter), it should be (clearly) established that there is no structural and functional relationship between the omitted feature and the other features incorporated into the claim.”(present order, reasons, 5.3)

This ruling not only reinforces the stringent standards applied to patent amendments in Europe but also serves as a critical reminder of the need for precision in drafting patent applications. Patent proprietors must ensure that all claims are robustly supported by the initial disclosure to withstand scrutiny under the EPO’s "gold standard." The decision is a certain hint for future cases involving added matter, particularly in how detailed and specific the original patent application must be to support subsequent claims.

Our key takeaways:

  • Strict Adherence to the EPO's "Gold Standard": The Hague Division of the Unified Patent Court emphasizes the importance of adhering strictly to the EPO’s "gold standard" for assessing added matter, which requires that any amendment to a patent application must be directly and unambiguously derivable from the original application.
  • Harmonization of Patent Enforcement: This ruling reflects the UPC's approach to harmonize patent enforcement across Europe by consistently applying EPO case law and standards. It reaffirms the court’s commitment to maintaining legal certainty for third parties and aligning with broader European patent practices.
  • Critical Analysis of Feature Relationships: To determine the allowability of intermediate generalizations in patent claims, it is essential to demonstrate that there is no structural or functional relationship between any omitted features and the remaining features of the claim.