Paris Central Division on auxiliary requests: Incomplete submissions jeopardize admissibility (UPC_CFI_433/2024)
EPG-Rechtsprechung | 08.06.2026
Court docket: Central Division Paris, Decision of 07.01.2026
UPC_CFI_433/2024 [EP 2 671 173]
Parties: Microsoft Corporation v. Suinno Mobile
Contributor: Maximilian Keck
Headnote
1. The defendant in a counterclaim for revocation action is Entitled to amend the patent, provided that the relevant application is included in the statement of defence (or, in any event, meets the filing deadline for this application) and Contains the information referred to in Rule 30 ‘RoP’.
2. The requirements for an application to amend the patent concerning the filing deadline, the inclusion of at least one amendment, and the use of the official language of the patent are objective in nature; failure to comply with these leads to the inadmissibility of the application. Conversely, the assessment of clarity, the sufficiency of the explanation regarding validity and infringement, and the reasonableness of the number of amendments is a matter of judicial discretion. Based on the specific circumstances of the case, the Court may decline to examine amendments that are inadequately formulated, insufficiently explained, or excessive in number.
3. As a general rule, while the mere deletion of claims may not necessitate a consolidated document, any substantive amendment requires the applicant to submit a full set of the amended claims. In accordance with the principle of judicial neutrality, the Court is prohibited from assisting the party in drafting or clarifying amendments. Consequently, the proposed amendments must be immediately intelligible to the Court and the counterclaimant without requiring subjective reconstruction of the applicant’s intent, ensuring the accuracy of subsequent annotations in the official patent registers.
Relevance of the decision
In this counterclaim for revocation action https://www.unifiedpatentcourt.org/sites/default/files/files/api_order/CD Paris 433-2024 - Counterclaim for Rev - 07.01.2026.pdf, the Paris Central Division had first to decide on the validity of the Patent in Suit in view of several added matter and inventive step attacks, and then on the admissibility of the auxiliary requests filed by the defendant.
The Court found that the patent, relating to people browsing the Internet by walking to discover search results as they come near them (r. 3), extends beyond the content of the application as filed.
The defendant filed in total seventeen auxiliary requests. The Court found Auxiliary Request I to be admissible but unable to remedy the defects of claim 1 (r. 124).
In connection with the remaining auxiliary requests, the Court made some important statements regarding the assessment of admissibility of auxiliary requests. They emphasized that aside from the objective criteria of Rule 30 of the Rules of Procedure (“RoP”) which must be followed for the request to be admitted, there are various case-dependent aspects requiring a discretionary evaluation by the Court, namely the comprehensibility and clarity of the amendments and of the reformulated claims, the sufficiency of the explanation for the reasons why the proposed amendments are valid and infringed, and the reasonableness of the number of amendments (r. 113).
On the issue of comprehensibility, the Court found that whilst the deletion of claims may not require the submission of a document containing the full set of claims, it remains the patent proprietor’s duty to present the auxiliary request in a manner that allows the other parties to easily understand the extent of the proposed amendments (r. 114). In other words, delegating this burden to the Court or the counterclaimant risks that the auxiliary request will be found inadmissible.
Based on this, the Court found Auxiliary Requests II to XVII to lack comprehensibility as no specific documents containing the claim amendments were filed with the application to amend. Thus, the Court could not unambiguously understand the scope of the proposed amendments to the claims and the requests were not admitted. Although the proprietor later filed the documents in a subsequent submission, this was considered too late to rectify the comprehensibility issue. The patent was therefore revoked in full.
This approach, according to which it is the patent proprietor’s burden to formulate well-defined auxiliary requests which can be readily understood by all parties, is in line with EPO practice. However, while under the right circumstances at first instance proceedings before the EPO one may be able to get through some late-filed requests, particularly if they are restricted to the dependent claims, it appears that the hurdle may be somewhat higher before the UPC.