SONN Patentanwälte – IP Attorneys

  1. UPC Local Division: Substantive Decision: Bifurcation, Binding Effect, Amended Claims

    In separate proceedings in which the counterclaim for a declaration of invalidity was referred by the Local Division to the Central Division (bifurcation), the Local Division is bound by the new wording of the claims resulting from the amendment of the patent in suit by a decision of the Central...

  2. UPC Court of Appeal: Procedural Decision: (No) New Grounds for Revocation in Case of Patent Amendments

    If an application to amend the patent is filed, the plaintiff must file a reply to the application to amend (R 43.3 RoP). Where appropriate in view of the proposed amendments, the reply may contain alternative arguments on non-infringement (R 32.2 RoP). However, the reply to the application to amend...

  3. UPC Local Division: Amendment of the Patent

    R 30 RoP does not restrict the patent proprietor in their application for amendment of the patent to the prerequisite that the application and the corresponding auxiliary applications must be in direct connection with the grounds for invalidity asserted in the counterclaim for invalidity. If dependent...

  4. UPC Local Division: Claim Interpretation

    The patent in suit relates to arrangements in wireless networks. In particular, it relates to a method and a device for high-speed processing of protocol headers in an intermediate and/or destination node of a packet-based communication network. When interpreting the patent claim, in addition to...

  5. UPC Court of Appeal: Original Disclosure

    An impermissible extension ("added matter") exists if the granted claim comprises subject matter that goes beyond the content of the original application. In order to determine whether an impermissible extension exists, the court must therefore first determine what the skilled person, with the aid...

  6. UPC Court of Appeal: Claim Interpretation

    As a general principle for the interpretation of patent claims, so-called "means-plus-function" features are to be understood as any embodiment capable of performing the function in question (UPC 14. 2. 2025, CoA 382/2024).

  7. Opposition proceedings: insertion of multiple alternatives into a claim

    Whether the replacement of a patent claim by a new claim containing a multitude of alternatives is admissible under Rule 80 EPC must be assessed on a case-by-case basis. The competing interests of the parties must be balanced to determine whether multiplying the alternatives constitutes an appropriate...

  8. UPC Central Division: Amendment of the Patent

    A request to amend the patent in suit that covers both claims challenged by the revocation action and claims not challenged is (only) inadmissible with respect to the latter claims. In a situation where the patent in suit is not fully contested, the patent proprietor is entitled to request amendments...

  9. On the adaptation of the description to the claims

    The requirement that the claims are to be supported by the description does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope...

  10. Prohibition of reformatio in peius in the case of undisclosed disclaimers

    The conditions of G 1/99 for permissible exceptions from the prohibition of reformatio in peius also apply if the impermissible amendment is an undisclosed disclaimer (EPO BoA 10 February 2021, T 2277/18).

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