UPC revokes Juul Labs’ patent over added matter while addressing auxiliary requests

In a recent decision concerning the revocation of a European patent owned by Juul Labs International, Inc., the Paris Central Division of the UPC addressed the handling of a large number of auxiliary requests in an application to amend the patent. The case arose from a revocation action filed by NJOY Netherlands B.V., which sought to invalidate Juul Labs’ patent on the grounds of added matter, lack of novelty, and inventive step. Juul Labs, in its defence, filed a conditional application to amend the patent claims, which included 57 auxiliary requests with different claim sets for the amendment of the patent.

The Court’s approach to excessive auxiliary requests

After the interim conference on 27 June 2024, the Court issued an Order on 5 July 2024 stating that Juul Labs may identify, from the set of auxiliary requests already on file, the specific claim sets it wished to pursue further by 20 July 2024. The Court did not require Juul Labs to reduce the number of auxiliary requests, as the Order did not state that the Defendant must narrow down the set. Nonetheless, Juul Labs voluntarily narrowed its requests to 12 claim sets.

The Court considered Juul Labs' decision to narrow the auxiliary requests to 12 claim sets as expedient for ensuring an efficient procedure and beneficial to the Claimant as well. The Court noted that without this motion to reduce the requests, the originally filed 57 auxiliary requests would have remained on file and would have required a yet-to-be-determined approach to address them during the oral hearing, potentially complicating the proceedings.

Claimant’s challenge and the Court’s ruling

The Claimant, NJOY Netherlands, argued that the original 57 auxiliary requests were excessive and did not comply with Rule 30(1)(c) RoP, which requires that conditional amendments must be reasonable in number given the circumstances of the case. NJOY contended that, due to their excessive nature, the entire set of auxiliary requests should be dismissed.

However, the Court rejected this argument, emphasizing that Rule 30(1)(c) does not mandate dismissing all requests simply because the initial set was large. Because the requests were narrowed down to 12 by Juul Labs, the Court deemed this a reasonable number given the circumstances of the case. The Court further noted that if the requests had not been reduced to 12, it would have required a yet-to-be-determined approach to address the 57 auxiliary requests during the oral hearing but indicated that it might not have dismissed them outright solely for being too numerous.

The Court ultimately revoked Juul Labs’ patent in its entirety on the grounds of added matter. The Court found that the claims, as filed, contained subject matter extending beyond the content of the original application, and none of the 12 auxiliary requests were sufficient to address this defect. An appeal is available.

This case and the decision demonstrate that filing large numbers of ARs is acceptable in the UPC.  Indeed, it will be an important thing to do to maintain as much flexibility for the patentee given that it will not at a later stage be able to add further AR’s to the amendment request.  Nevertheless, care must be taken to ensure that this is done proportionately and also that the claim sets actually deal with the main thrust of the validity attacks. Lessons from opposition proceedings can be learnt from this case and so working closely with EPAs is clearly advisable.

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