The UPC aligns with the EPO on added matter (UPC_CFI_808/2025)
UPC Case Law | 14.04.2026
Court docket: LD Paris, Final order of 23.01.2026
UPC_CFI_808/2025 [EP 3 470 533, EP 3 591 073 , EP 3 443 066, EP 3 766 986]
Parties: Guardant Health v. Sophia Genetics
Contributor: Juliet Redhouse
Headnote
1. Unreasonable delay under R. 211.4 RoP: In the present case, a three-month period constitutes a reasonable delay to prepare the application for provisional measures by gathering the necessary evidence, given that the case involves several patents and a complex and sophisticated technology.
2. Added matter (divisional patent): It is decisive whether all the elements are directly and unambiguously derivable from the patent as originally filed (in the present case: the PCT application) or whether the latter is used as some kind of reservoir from which scattered fragments can be combined, in which case there is a whole series of different ‘inventions’ included in the PCT application.
3. Added matter: From the selections that have been made without any clear indication in the earlier application, the Court concludes that the invention as now worded in the granted claim cannot directly and unambiguously be derived from the patent as filed.
4. Demonstration of an infringement with a sufficient degree of certainty (R. 211.2 RoP): The burden of proof for the alleged infringement lies with the party invoking it. Applicant cannot rely solely on the disputed information from a press release to demonstrate how Defendants' software processes data. Additional in-depth investigations into how Defendants’ platform operates or more technical documentation on the 'accused software' would have been necessary.
Relevance of the decision
The EPO is notorious for adopting a strict approach to the assessment of added matter. Early decisions from the UPC have indicated that the UPC might be more lenient in its approach. For example, in Abbott v. Sibio, the UPC Court of Appeal considered whether the omission of an elastomeric ‘sealing member’ from an on-body sensor device adds matter. In particular, the UPC Court of Appeal asked whether the skilled person would consider the sealing member to be “necessary for achieving the overall aim and effect of the invention”, suggesting that the UPC may place more focus on the function and purpose of the original disclosure than might be expected from the EPO. However, in Abbott v. Sibio there was no parallel EPO decision for direct comparison.
In Guardant Health v. Sophia Genetics, the UPC Local Division in Paris considered whether the combination of features recited in the granted claims of EP-3591073-B1 (EP’073) added matter, with the features arising from a numbered embodiment in the description and several elements disclosed in different passages of the description. alongside alternatives to the claimed features. In particular, the UPC considered whether the claimed combination of features was directly and unambiguously disclosed in the original disclosure or whether the application was “used as a kind of ‘reservoir’ from which scattered fragments can be combined”. This terminology is familiar from EPO case law, perhaps indicating the UPC’s desire to align with the EPO for assessing added matter. The UPC concluded that Guardant Health “does not provide any arguments to convince the Court that, among all the elements mentioned in the PCT application, the person skilled in the art would have been prompted to choose from among the alternatives proposed, those leading to the invention disclosed in EP’073.”
Contrary to Abbott v. Sibio, there are parallel EPO opposition proceedings for EP’073, and this proved to be a relevant factor in the UPC’s decision. Specifically, the UPC referred to the EPO Board of Appeal (BoA) Preliminary Opinion issued in the opposition proceedings for EP’073, in which the BoA stated that it is minded to revoke EP’073 under added matter. One of the UPC’s criticisms was that the Patentee had not addressed the negative position in the Preliminary Opinion. This is interesting from a procedural perspective, as the Preliminary Opinion was admitted as evidence only after the oral hearing at the UPC took place, and so Guardant Health would have had limited opportunity (if any) to address the Preliminary Opinion. It is also interesting that the UPC gave such weight to the Preliminary Opinion given that it is simply a preliminary indication of the BoA’s position, rather than a final decision.
This decision indicates the UPC’s desire to align its approach for the assessment of added matter with the EPO. The EPO BoA hearing for EP’073 is scheduled for April 24, 2026, where it will be interesting to see how the BoA decides on added matter – in particular, if the BoA does not follow its preliminary position, will the UPC follow suit?