UPC_CFI_1/2023

ANTIGEN BINDING PROTEINS TO PROPROTEIN CONVERTASE SUBTILISIN KEXIN TYPE 9 (PCSK9)

RevocationMain Revocation ActionMunich CDRevocationCase Closed

Overview Decisions Reasoning Citations Documents Timeline

This case cites

Authorities cited within the decisions on file for this case.

EPC article · 16

Target	Legal point	Strength	Excerpt
45	language regime — proceedings open to public does not entail access to all pleadings	Binding	The requirement that proceedings shall be open to the public (Article 45 UPCA) does not entail that all pleadings and evidence submitted should be accessible to the public.
69	costs — reasonable and proportionate legal costs borne by unsuccessful party	Binding	In accordance with article 69 UPCA, reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party
6	jurisdiction — UPC as one court with one registry	Binding	in-line with the notion of the UPC as 'one Court' with 'one Registry' (and under normal circumstances 'one CMS'), as discussed above in the light of Article 6 and 10 UPCA
10	jurisdiction — registry structure of the UPC	Binding	in-line with the notion of the UPC as 'one Court' with 'one Registry' (and under normal circumstances 'one CMS'), as discussed above in the light of Article 6 and 10 UPCA
23	jurisdiction — registry tasks including keeping register and publishing decisions	Binding	The Registry also has many other tasks for the entire UPC, such as "keeping the register" and "publishing the decisions of the Court" (cf. Article 23.2 Statute of the UPC, 'Statute')
10	jurisdiction — Registry Rules adopted on basis of UPCA	Binding	the Registry Rules have been adopted by the Presidium on the basis of the UPCA and the Statute to govern the Registrar's service (Article 10.4 UPCA)
15	jurisdiction — Presidium governs Registry including sub-registries	Binding	the Registry Rules have been adopted by the Presidium on the basis of the UPCA and the Statute to govern the Registrar's service (Article 10.4 UPCA), to govern the Registry including the sub-registries (Article 15.3(e) Statute)
24	jurisdiction — Registry Rules govern keeping of register	Binding	to provide rules for keeping the register of the Court (Article 24.1 Statute)
41	jurisdiction — details of proceedings laid down in RoP	Binding	The details of how proceedings are to be conducted before the Court are laid down in the RoP (Article 41.1 UPCA).
25	jurisdiction — role of Deputy-Registrar	Binding	The Deputy-Registrar in accordance with the Statute (Article 25) and Rule 1(g) of the Registry Rules, is the Deputy-Registrar of the Court
87	priority — 'same invention' requires skilled person to derive subject-matter directly and unambiguously from prior application	Binding	A claimed invention is to be considered the "same invention" as meant in Article 87 EPC (priority right) if the skilled person can derive the subject-matter of the claim directly and unambiguously
138	inventive step — patent revoked for lack of inventive step under Article 138(1)(a) in connection with Article 56 EPC	Binding	the Patent is revoked entirely, on the ground of Article 138 (1) sub a in connection with Article 56 EPC (Article 65(2) UPCA)
56	inventive step — standard for non-obviousness	Binding	the Patent is revoked entirely, on the ground of Article 138 (1) sub a in connection with Article 56 EPC (Article 65(2) UPCA)
65	inventive step — UPCA ground for revocation referencing EPC articles	Binding	the Patent is revoked entirely, on the ground of Article 138 (1) sub a in connection with Article 56 EPC (Article 65(2) UPCA), for all of the Contracting Member States
76	claim construction — decision on merits may only be based on grounds, facts and evidence submitted by parties	Binding	Article 76 UPCA, according to which a decision on the merits may only be based on grounds, facts and evidence, which were submitted by the parties
69	costs — unsuccessful party bears legal costs	Binding	In accordance with Article 69 UPCA and Rule 118.5 RoP the Defendant, as the unsuccessful party, the Patent being revoked entirely, has to bear the legal costs of the Claimants.

Rules of Procedure · 7

Target	Legal point	Strength	Excerpt
RoP_rule_262.1b	language regime — public access requires legitimate reason; personal/professional interest insufficient	Binding	Rule 262.1(b) RoP requires a concrete and verifiable, legitimate reason for making available written pleadings and evidence upon a request by a member of the public.
RoP_rule_9.1	language regime — discretionary admission of additional submissions outside normal procedure	Binding	The Claimants request that the Court exercises the discretion provided by Rule 9.1 RoP to make a procedural order that their letter dated 15 January 2024 ... be admitted into the proceedings
4.2	jurisdiction — lodging of statement of revocation when CMS has ceased to function	Binding	Rule 4.2 RoP is interpreted by the Court such that a Statement of revocation may be lodged (as one of the options) at the Registry seated in Luxembourg.
44	jurisdiction — statement of revocation to be lodged at the Registry	Binding	Specifically for revocation actions, Rule 44 RoP states that a Statement of revocation is to be lodged "at the Registry", further emphasising the role of the Registry.
3	jurisdiction — acts of Registry may be performed by staff of any sub-registry	Binding	acts of "the Registry" may generally be performed by a member of staff of the Registry or sub-registry of the relevant division and vice versa (Rule 3 RoP)
118.5	costs — costs order in favour of successful party	Binding	In accordance with Article 69 UPCA and Rule 118.5 RoP the Defendant, as the unsuccessful party, the Patent being revoked entirely, has to bear the legal costs of the Claimants.
262.1	access to file — third party request for access to written pleadings and evidence	Binding	Dehns (the 'Applicant') on 14 August 2024 lodged a request under Rule 262.1(b) of the Rules of Procedure ('RoP') of the Unified Patent Court ('UPC') with the Central Division (Section Munich)

courtName.other · 4

Target	Legal point	Strength	Excerpt
D-AC/10/24042023_D	costs — scale of ceilings for recoverable costs set by Administrative Committee	Binding	the Administrative Committee (´AC´) has published a scale of ceilings for recoverable costs depending on the value in dispute (dated 24 April 2023, published as D-AC/10/24042023_D)
Registry Rules Rule 3	jurisdiction — opening hours for submitting paper documents at competent division	Background	Rule 3, section 2: "Paper documents and physical evidence may be submitted in person during opening hours of the competent division of the Court of First Instance or of the Court of Appeal."
Registry Rules Rule 61	jurisdiction — hard-copy lodging procedure for Deputy-Registrar	Binding	Rule 61 of the Registry Rules, which does refer to Rule 4.2 RoP, provides instructions to "the Deputy-Registrar" what to do in case of receiving hard-copy lodging of documents.
D-AC/10/24042023_E	costs — ceiling for recoverable representation costs set by Administrative Committee	Binding	the corresponding ceiling for recoverable representation costs (up to 2 million euro, see AC Decision on the Scale of Ceilings for Recoverable Costs dated 23 April 2023, D - AC/10/24042023_E)

Cited by

Subsequent UPC decisions citing this case.

Cited in	Date	Legal point	Strength	Excerpt
ORD_3876/2025 Paris LD	Jan 24, 2025	jurisdiction	Distinguished	the order ruled by the Central Division of Munich (CD Munich, order 560432 case CFI_1/2023) to which PHOTON WAVE refers in support of its reasoning is not relevant to the present case since it refers to a situation provided for in Article 33.5 UPCA