PATENT | UPC on added matter and functional claims

On 14th of February 2025, the Court of the Appeal of the Unified Patent Court (“CoA”) issued its decision in the case UPC CoA 382/2024 addressing the issues of functional claims (i.e. patent claim language in which a feature is defined by its function rather than its structure) and added matter (i.e. when the claim as granted contains subject matter that extends beyond the content of the application as filed). The patent at issue claimed an on-body glucose monitoring device. First, the CoA noted that many features of the claimed device were described in a functional term. Applying the principles set out by the UPC in its final order in the case UPC CoA 335/2023 (Nanostring v 10x Genomics), the CoA confirmed that means-plus-function features must be understood as any feature that is suitable for carrying out the function and, as such, “configured to” should be understood as “suitable for”. On the issue of the added matter, the CoA, substantially following the principles set out by the case law of the European Patent Office, stated that the Court must first ascertain what the skilled person would derive directly and unambiguously using his common general knowledge from the whole of the application as filed. By applying these principles, the CoA concluded that in the present case it was not more likely than not that the patent contained added matter.

Newsletter n. 106 – April 2025