No Formal Amendment Required: The Court of Appeal on Defending Granted Dependent Claims
The Court of Appeal clarifies that patentees defending granted dependent claims against revocation do not need to file a formal application to amend under Rule 30 RoP, provided they properly substantiate their validity.
A patentee defending granted dependent claims against a revocation attack is not required to file a formal application to amend the patent under Rule 30 RoP.
Why did the Mannheim Local Division refuse to assess the dependent claims of EP 3 476 616?
The dispute in UPC_CoA_474/2025 centers on EP 3 476 616, a patent held by Fujifilm covering a lithographic printing plate precursor. The invention features an anodized film having micropores with a large-diameter portion and a small-diameter portion to provide excellent image visibility and a long press life. At first instance, Kodak filed a counterclaim for revocation. The Mannheim Local Division revoked the German designation of the patent in its entirety. Crucially, the lower court refused to consider Fujifilm's fallback positions based on the dependent claims. The panel held that defending dependent claims separately was inadmissible because the claimant did not file a proper application to amend the patent pursuant to Rule 30 RoP. Fujifilm appealed this blanket refusal to the Court of Appeal.
How does Article 65(3) UPCA mandate the evaluation of partial validity?
The Court of Appeal firmly rejected the first-instance approach. The panel noted that it is a general principle underlying the Unified Patent Court Agreement that a patent should not be revoked in its entirety if it is only partially invalid. Article 65(3) UPCA dictates that if the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part. The appellate judges emphasized that the use of the word "shall" indicates that the Court does not have discretion in this respect (reasons 53). Because dependent claims add further features to the independent claim, the invalidity of an independent claim does not necessarily lead to the conclusion that the dependent claims are invalid as well.
What level of substantiation does Rule 29A(c) RoP require for claim combinations?
While the Court is obligated to consider partial validity, it will not investigate every dependent claim of its own motion. The burden of substantiation remains on the parties. A claimant seeking revocation must indicate the extent of its request under Rule 25.1 RoP. Conversely, Rule 29A(c) RoP requires the patentee to identify in a sufficiently substantiated manner which dependent claims it considers to be valid should the independent claim be held invalid.
If a patentee wishes to rely on combinations of dependent claims that do not directly and specifically follow from their wording, they must clearly indicate which combinations they consider valid. Furthermore, the Court of Appeal established a boundary based on due process: the number of such combinations that the patentee wishes to rely on must be reasonable in number, considering the circumstances of the case (reasons 57).
When is a formal application to amend under Rule 30 RoP actually necessary?
The appellate panel clarified the precise procedural boundary for amendments. Defending the claims as granted requires no formalities. An application to amend under Rule 30 RoP is only required if the patentee wishes to maintain its patent with amended wording, i.e. deviating from the wording of the claims as granted, or proposes combinations of dependent claims not explicitly included therein (reasons 5). Merely defending dependent claims or combinations already encompassed by the granted claims falls outside this requirement.
How must patentees substantiate fallback positions after UPC_CoA_474/2025?
Patentees facing a revocation action no longer need to artificially package their granted dependent claims into formal auxiliary requests just to ensure they are considered. However, this procedural relief comes with a strict substantiation burden. Practitioners must explicitly detail in their Defence to the Counterclaim for revocation exactly which dependent claims they are defending and why those specific claims are independently valid. If relying on multiple dependencies, counsel must explicitly spell out the exact combinations they intend to defend and ensure the total number of combinations remains reasonable. Failing to substantiate these fallback positions upfront will result in the loss of the dependent claims, not because of a missing procedural form, but due to a lack of substantiated interest.
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Further Reading
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