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Overview · Filed: Dec 23, 2024

UPC_CFI_836/2024

NAIL FOR USE IN A NAIL SETTING DEVICE

RevocationMain Revocation ActionMunich CDRevocationCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

BAUSSMANN Collated Fasteners GmbH brought a revocation action against Raimund Beck Nageltechnik GmbH's EP 4 019 790 B1 (a nail for use in a nail-setting device). The Munich Central Division partially revoked the patent for 17 member states, finding the granted independent claims (and Auxiliary Requests I and II) lacking inventive step, while upholding Auxiliary Request III (claims 1 and 2) together with the unchallenged claims 5 and 6. Costs were apportioned 70% to the patent owner and 30% to the claimant.

Accepted arguments
What the court agreed with — by party.

  • Claims 1–4 and 6 of EP 4 019 790 in their granted form lack inventive step over prior art

    ClaimantLegal basis: Art. 56 EPC; inventive step

    Note: Munich Central Division accepted BAUSSMANN's challenge to the main request and Auxiliary Requests I and II, finding independent claims 1 and 3 (and dependent claims derived therefrom) obvious over the prior art.

  • Retrospective assessment (hindsight) must be avoided when determining inventive step, even when relying on common general knowledge

    RespondentLegal basis: Art. 56 EPC; Headnote 1

    Note: Court accepted this principle and required the skilled person to have had a genuine incentive to arrive at the claimed subject matter from the prior art without benefit of hindsight.

  • Court and defendant are bound by the scope of the revocation action as defined by the claimant; non-attacked claims are immune

    RespondentLegal basis: Art. 76(1) UPCA; Headnote 2

    Note: Because BAUSSMANN chose not to attack claims 5 and 6 of the granted patent, those claims remained valid and the patent was maintained in amended form (Auxiliary Request III plus claims 5 and 6 unchanged).

Rejected arguments
What the court did not agree with — and why.

  • Main request (granted claims) should be maintained in full

    RespondentLegal basis: Art. 56 EPC

    Reason: Claims 3 and 6 of the main request were found not patentable (lack of inventive step / other grounds), rendering the main request and Auxiliary Requests I and II non-allowable.

  • Auxiliary Request I is allowable

    RespondentLegal basis: Art. 56 EPC

    Reason: Auxiliary Request I contained claim 3 which was equivalent to granted claim 6 and was thus not patentable for the same reasons.

  • Auxiliary Request II is allowable

    RespondentLegal basis: Art. 56 EPC

    Reason: Auxiliary Request II included independent claim 3 of the main request which was not allowable, making AUX II equally non-patentable.

Key legal principles
Doctrines and rules cited in the reasoning.
Inventive step assessment must avoid hindsight; the skilled person needs an incentive to arrive at the claimed subject matter from the prior artCommon general knowledge may be combined with prior art but the incentive requirement still appliesScope of revocation action is bounded by what the claimant attacks; non-attacked claims are insulatedPartial revocation: patent maintained in amended form (Auxiliary Request III) with claims 5 and 6 unchanged per Art. 65(3) UPCA

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