Front loading and pointers to the solution – the view from the UPC Court of Appeal

2026 Week 2

After the Edwards and Amgen decisions in late November 2025, we now have a further UPC Court of Appeal (CoA) decision, reviewing the outcome of first instance revocation proceedings at the Central Division (CD).

At first instance decision in NJOY v. VMR (reviewed in UPC Weekly 2024 w48), the UPC CD Paris revoked VMR’s patent EP 3456214 B2. The patent was held to be obvious, despite being maintained in amended form by the EPO opposition division in 2023. The CD also had some interesting things to say about the UPC’s front loaded procedure.

On appeal in NJOY v. VMR, the CoA view on front loading chimed exactly with the first instance. On inventive step, the CoA took a slightly different approach, making it clear that the statement of the objective problem must not contain pointers to the solution. But in the end the outcome was the same – the patent was revoked. We take a look at these two aspects of the decision to understand the direction of travel of the CoA on these important aspects of procedure and substance.

First instance front loading

We keep banging on about the UPC procedure being front loaded. What do we mean by this? For those who have prepared statements of claim at the UPC it will be very clear. You need to set out your full case at the earliest possible stage of the procedure. The same applies to the defence. Gradually adding new grounds, evidence and arguments during the procedure will not be allowed. It is possible to try to amend your case later (under Rule 263 RoP) but the courts have been strict about this – it is only really possible for genuinely new developments that could not have been found earlier.

But inevitably during the exchange of the different rounds of correspondence in a typical UPC action, the parties try to add arguments, colour or evidence to support their case and to counter the positions adopted by the other side.

At first instance, NJOY (the applicant for revocation) filed new evidence with its reply to the defence for revocation. The patentee VMR objected, saying that this evidence could and should have been filed earlier. The court allowed the evidence into the proceedings. The issues addressed by the new evidence were claim interpretation and the common general knowledge of the skilled person. Although in principle the new evidence could have been prepared and filed at the outset, the court said that it is reasonable for the claimant to be allowed to allege new facts in support of the main facts already timely alleged and then disputed by the defendant.  

The point made by the CD was that the purpose of front loading is to provide overall procedural efficiency, to allow the case to reach an oral hearing on the merits within 12 months. Being too strict about front loading risks reducing efficiency by incentivising filing very lengthy submissions and large amounts of evidence, just in case.

In effect, the CD provided a little bit of welcome flex to the front loading of the UPC procedure. The parties should present a full but concise case with evidence at the outset, but with the understanding that a party should be allowed to react to unforeseen (but maybe strictly foreseeable) arguments raised by the other side.

Front loading on appeal

In a nice efficient bit of appellate decision-making, the CoA simply endorsed the approach of the CD to front loading, calling out a long section of text from the first instance decision (summarised above) and saying “that’s right”.

First instance obviousness

The technology of the patent is e-cigarettes. The main claim defined a vaporizer (e-cigarette system) with a replaceable cartridge atomizer (“cartomizer”) and a shell with the battery and an open chamber for receiving the cartomizer. The novel feature was that there was a window in the shell to give a view into the chamber. The effect of this is that you can see part of the cartomizer when the vaporizer is assembled ready for use. But the patent didn’t really say anything further than this in terms of technical advantages. See our report on the first instance decision for more detail and pictures.

The CD formulated what they called the “underlying technical problem” addressed by the invention as:

to develop a vaporizer that has a shell having a battery segment and a cartomizer receiving segment with the cartomizer receiving segment defining a chamber having an insertion end distal from the battery segment and a base end proximate to the battery segment and a cartomizer insertable into the chamber at the insertion end, in such a manner that it allows a portion of a cartomizer receiving chamber of the shell to be visible from the outside.

Accordingly, to reach the claimed invention, the skilled person would merely need to decide to put a window into the shell to achieve the effect described in the problem. Unsurprisingly, the CD decided that the claim lacked inventive step.

Inventive step on appeal

Since the first instance decision, we have seen the UPC CoA set out their approach to inventive step. The CoA (of course) followed that framework here, and this was somewhat different to the approach of the CD.

The main difference was in the formulation of the problem, now called the “objective problem”. A clear requirement of the CoA approach to inventive step is that the statement of the objective problem must not contained pointers to the claimed solution.

Arguing that there was a further technical effect provided by the novel feature of the claim, VMR wanted the objective problem to be this:

providing a vaporizer that facilitates checking the status of the inserted cartomizer and the battery electrical contacts.

The CoA disagreed because there was no disclosure in the patent of the window feature providing a status check on the battery electrical contacts. But it was also clear that the CoA was not comfortable with the CD formulation of the problem, because it points too clearly towards the features of the claim. So the CoA’s formulation of the objective problem was this:

providing a vaporizer that facilitates checking the status of the inserted cartomizer.

But on the evidence, the CoA still decided that the claim was obvious. This was on the basis of a prior art document (disclosing all the features of the claim except the window) and common general knowledge. The CoA stated: 

The skilled person wishing to provide a vaporizer that facilitates checking the status of the inserted cartomizer, would have considered as a routine adaption the inclusion of a window, a well-known general means for everyday appliances and devices, provided at the obvious place: the cartomizer receiving segment. The result of such a step was readily predictable.

The CoA stepped through all of the auxiliary requests filed by the patent proprietor but decided they were all either obvious or lacking clarity. The appeal was therefore rejected and the patent revoked.