CD Paris does not accept automatic Carry-Over of objections to auxiliary requests (UPC_CFI_461/2025)

In CD Paris - UPC CFI 461/2025 - Huntsman v. BASF (CD Paris - 461-2025 - 22.04.2026 anonymized version.pdf) the UPC Paris Local Division dealt with a nullity action against EP 1 516 720 concerning a composite element with a polyurethane adhesion promoter. 

The patent had already expired when the action was filed, but the Court nevertheless found the action admissible ex officio as a legitimate interest remained due to possible damages claims for the period when the patent was in force and because the patentees had already used the patent in a Belgian evidence-preservation proceeding. This aspect is broadly consistent with EPO practice and with German civil procedure, where admissibility issues may be examined by the court on its own motion and where expired patents can still matter because validity disputes may affect past infringement and damages disputes.

One of the more controversial aspects of the UPC CoA decision in Meril Italy srl v. Edwards Lifesciences Corp on inventive step is the meaning of the “objective problem”. This case casts some light on this issue, as the Court framed inventive step by identifying the objective problem itself from the patent as a whole by comparing the claim as a whole in the context of the description and the drawings while taking into account the inventive concept underlying the invention (the technical teaching), which must be based on the technical effect(s) which the person skilled in the art, on the basis of the application, understands to be achieved by the claimed invention, rather than being bound by the problem stated in the patent. 

On this basis the court held that the real focus of the invention was improved adhesion instead of flame-retardancy Although para. [0005] states a combined aim, the patent’s overall teaching—particularly paras. [0001]–[0004] and [0030]—demonstrates that the invention in fact solves the adhesion deficit of the used PIR systems by means of an adhesion promoter, with flame retardancy remaining an assumed constraint rather than a technical contribution (paras. [38]–[39]).

It goes without saying that on this point the UPC diverges from the formal EPO problem-solution-approach, which generally formulates the objective technical problem on the basis of distinguishing features over the closest prior art and their technical effect.

The most important procedural point is that, for auxiliary requests, the Court said it is bound only by the attack actually advanced by the claimants against those requests. In other words, objections against the granted claims do not automatically carry over; they must be expressly re-argued against the amended requests. In this case, the inventive-step objection based on prior art that resulted in the invalidity of the main request was not taken into account by the Court in its assessment of the auxiliary requests. This corresponds to the strict approach to raising objections in EPO opposition/appeal practice and the party-driven scope of review in German invalidity proceedings.