UPC_CFI_202/2024: CD Paris decides that subject-matter not complying with generally accepted laws of physics lacks industrial application according to Art. 57 EPC

UPC Case Law | 06.08.2025

Court docket: CD Paris, decision of 29.05.2025 - CFI 202/2024 [EP 3 655 346]
Parties: Lindal Dispenser GmbH v. Rocep-Lusol Holdings Limited

Contributor: Sebastian Rennebaum

Headnote

Article 57 ‘EPC’, according to which “an invention shall be considered as susceptible of industrial application if it can be made or used in any kind of industry, including agriculture” must be interpreted as meaning that an invention or an application for a patent for an alleged invention which would not comply with the generally accepted laws of physics falls within its scope because it cannot be used and therefore lacks industrial application.
Drawings must always be used as explanatory aids for the interpretation of the patent claim but cannot be used to extract a characteristic when definitively and unambiguously contradicted by the description.
In the event that the patent proprietor applies to amend the patent and proposes more alternative auxiliary requests, these auxiliary requests must be addressed in the order indicated by the applicant, in the absence of specific elements and/or requests suggesting otherwise.

Relevance of the decision

In Lindal Dispenser GmbH v. Rocep-Lusol Holdings Limited, the CD Paris dealt with the issue of industrial applicability expressly relying on principles developed by the EPO.

They referred to EPO Board of Appeal decision T 0541/96, which holds that the requirement of industrial application stipulated by Art. 57 EPC is not met if subject-matter does not comply with generally accepted laws of physics; in such a case, it cannot be used and therefore lacks industrial application.

Although claim 1 was found to meet this requirement, dependent claim 5 - defining that “in the second exhausted position the mixture of a liquid propellant and a compressed gas are at a pressure equal to the vapour pressure of the liquid propellant” - did not comply with Art. 57 EPC. In particular, the CD Paris agreed with Claimant that the mixture of a liquid propellant and a compressed gas can never be at a pressure equal to the vapour pressure of the liquid propellant alone in the second exhausted position (points 42 and 43 of the decision), seemingly because the partial pressure of the compressed gas will also contribute to the total pressure when both liquid propellant and compressed gas are present.

The patent was maintained based on an auxiliary request in which this claim was deleted. Thus, similar to EPO practice on sufficiency, the UPC finding that a dependent claim is unworkable does not impact the independent claim (see T 2920/18 reason 2.6).

EPO case law was also influential in assessing post-published evidence for industrial applicability of claim 1. Claimant argued that Defendant’s video was post-published evidence and, per the decision G 2/21 of the EPO’s Enlarged Board of Appeal, cannot remedy the requirement that a disclosure of the invention has to be sufficiently clear and complete for it to be carried out by the person skilled in the art. The CD Paris rejected this, distinguishing the present case from G 2/21, where the technical effect was not credible without experimental data. This approach will seem familiar to EPO practitioners.