UPC Court of Appeal clarifies added-matter test for divisional applications (UPC_CoA_764/2024)

EPG-Rechtsprechung | 11.11.2025

Court docket: Court of Appeal, decision of 02.10.2025 - UPC_CoA_764/2024 [EP 3 926 698]
Parties: expert e-Commerce GmbH and expert klein GmbH v. Seoul Viosys Co., Ltd.

Contributor: Maximilian Zangs

Headnote

1. There is added matter if the claim as granted contains subject-matter that extends beyond the content of the application as filed. In order to ascertain whether there is added matter, the Court must thus first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed, whereby implicitly disclosed subject-matter, i.e. matter that is a clear and unambiguous consequence of what is explicitly mentioned, shall also be considered as part of its content.
2. Where, as here, the patent results from a divisional application, this requirement applies to each earlier application. The subject matter of the granted claim 1 thus may not extend beyond (1) the disclosure of the application as filed for the patent in suit and (2) the disclosure of the original PCT application that entered the regional phase and is the parent application for the divisional application.
   
   

Relevance of the decision

Ever since Abbott v Sibio, the UPC CoA has enjoyed a reputation for being considerably more patentee friendly on added matter than the EPO Boards of Appeal. This decision illustrates the limits of the UPC CoA's generosity on this point, and provides a simple illustration of when amendments add matter. 

The patent in dispute concerned a light-emitting diode (LED) and was based on a chain of several divisional applications. The defendants argued that granted claim 1 (which covers both LEDs with multiple mesa structures and LEDs with only one mesa structure) went beyond the content of the parent application. The CoA agreed with this argument: the original disclosure of the parent application disclosed only LEDs with multiple mesas, and LEDs with only one mesa were not part of the originally disclosed subject matter. There was no such explicit disclosure, nor was the subject-matter implicit (a clear and unambiguous consequence of what was explicitly mentioned).

Even the argument that the product arose from a well-known cutting process was not convincing, because there was no direct and unambiguous disclosure of a single-mesa diode resulting from such a process or corresponding details pertaining to how the cutting step would occur in the original parent application. The CoA noted that the defendant had provided no substantiation to support this argument. Specifically, in the absence of a clear statement in the application and without substantiation e.g., through a third-party expert opinion, the argument remained only a theoretical possibility and could not amount to a direct and unambiguous disclosure.

Claim 1 therefore covered additional technical content that was not originally disclosed in the parent application (an unallowable extension within the meaning of Art. 76(1) EPC).

It is noteworthy that the court expressly stated that this requirement must be met for divisional applications for each earlier application in the chain (i.e., not only for the immediately preceding divisional application, but also for the original (in this case PCT) application). The CoA thus emphasizes the strict application of Art. 76(1) to the entire family of applications and is consistent with the established case law of the EPO Boards of Appeal.

On the other hand, the decision alludes to a more patentee-friendly approach to added matter than the EPO, given their openness to hearing expert opinions on whether a feature is implicitly disclosed.

The decision suggests that the CoA takes a similar but slightly more patent-friendly approach to the EPO with regards to questions of unallowable extension of subject-matter. For applicants, this means that utmost care is required when filing divisional applications to ensure that all claimed variants (in particular alternative structures) are clearly derivable in each prior application. Further, it may be useful to prepare expert opinions to support any arguments that a feature is implicitly disclosed.

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