expert e-Commerce GmbH and expert klein GmbH v. Seoul Viosys Co., Ltd., UPC Court of Appeal, 2 October 2025, Case No. UPC_CoA_764/2024
Extension of subject-matter
The Court of Appeal applied the following criteria for the application of Art. 123 (2) EPC:
“- An impermissible extension of subject-matter occurs when the subject-matter of the granted claim extends beyond the content of the application as originally filed. To determine this, the court must first determine what information a person skilled in the art, objectively and with reference to the filing date, would directly and unambiguously derive from the entirety of the application as filed, using his or her common general knowledge. In this context, even implicitly disclosed subject-matter is to be considered part of the content, i.e., subject-matter that clearly and unambiguously follows from what is expressly mentioned.
– If, as in this case, the patent resulted from a divisional application, this requirement applies to any earlier application. The subject-matter of granted claim 1 must therefore not extend beyond
(1) the disclosure of the originally filed application for the patent in suit and
(2) the disclosure of the original PCT application that has entered the regional phase and constitutes the parent application of the divisional application.”
A copy of the decision can be read here.
