Irides: Weekly global patent litigation update

This edition features updates from:  The USA, India and the Unified Patent Court (UPC).

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world.
 

USA

Federal Circuit Tightens the Rules on Borrowed Priority Dates.

In Dental Monitoring v. Align Technology, the Federal Circuit issued a precedential decision fundamentally changing how the PTAB determines whether a US patent or published application qualifies for an earlier prior-art date under the AIA — specifically whether a reference can claim the benefit of an earlier provisional filing under §119(e) to reach back for prior-art purposes.

The Court rejected the PTAB's post-AIA approach that satisfying the procedural requirements for claiming priority was enough to rely on a provisional filing date for prior art. It held that the Dynamic Drinkware rule carries over to post-AIA prior art dating. Therefore, entitlement to priority under AIA s. 102(d)(2) also requires compliance with the substantive requirements of s. 112(a) for written description support of at least one later published claim.
 

India

Supreme Court Rules on Seed Rights vs Breeder Rights.

In Kavitha Kuruganti v. PepsiCo, the Indian Supreme Court handed down India's first-ever ruling on plant variety registration under the Protection of Plant Varieties and Farmers’ Rights (PPV&FR) Act 2001. The Court upheld the Gujarat High Court's decision that filing infringement suits to enforce a registered breeder's rights is not, by itself, vexatious or predatory conduct capable of triggering revocation. If sued, an individual farmer can raise the exemption under s. 39(1)(iv) PPV&FR, where farmers are entitled to do certain acts in respect of protected varieties, as a defence to any infringement proceedings.
 

UPC

Paris Central Division clarifies UPC jurisdiction prior to the grant of a European patent.
[Omina v Sidel, UPC_CFI_799/2026]

The Paris Central Division (CD) handed down an Order, which has recently become public, dealing with the circumstances in which a claim may be brought in respect of European patent applications that have not yet granted.

The Claimants (Omnia) sought a declaration of non-infringement in respect of two of the Defendant’s (Sidel’s) patent applications. EP 194 was published in the Bulletin of the European Patent Office on 22 April 2026 after service of the Statement of Claim. EP 351 had been granted pursuant to Art. 97(1) EPC but not yet published, with mention of the grant in the Bulletin of the European Patent Office expected on 20 May 2026.

Sidel filed a preliminary objection challenging the Court’s jurisdiction under Art. 32 UPCA on the basis that it requires a “patent granted under the provisions of the EPC”. Sidel argued that, in circumstances where the Claimant’s action was based (at the time of filing) on two patent applications, the UPC lacked jurisdiction to hear the action. In response, Omnia argued that the UPC has jurisdiction provided that the patents in issue are granted during the course of proceedings. 

The Paris CD agreed with Sidel that a patent application does not fall under the definition of a “patent” (as provided for in Art. 2(e), (f) and (g) UPCA); however, it is sufficient that the patent has been granted before the Statement of Defence is filed. This would ensure that the decision pertains to a valid and clearly defined subject matter.

Applying these principles, the Paris CD concluded that it had jurisdiction in relation to EP 194 and EP 315. In the Court’s view, this approach reduced the risk that a national court might be involved in proceedings whose subject matter, once the patent has been granted, is to be reserved for the UPC pursuant to Art. 32(1) UPCA. Moreover, it would avoid the procedurally inefficient situation of the Court having to declare that it lacks jurisdiction only for new proceedings to be filed immediately once the patent granted.

Following service of the above proceedings but prior to the grant of the patents, Sidel had filed applications to opt EP 194 and EP 351 out of the UPC system. On the basis that the patents were entered onto the opt out register after the action was lodged with the Court, the Paris CD ruled that the applications to opt out EP 194 and EP 351 were ineffective pursuant to Art. 83(3) UPCA and r. 5(6) RoP.
 

UPC

Court of Appeal dismisses added matter and inventive step attacks, upholding Abbott’s glucose monitoring patent.
[Sibio v Abbott, UPC_CoA_884/2025]

The Court of Appeal has dismissed Sibio’s appeal against the Paris Central Division’s decision upholding Abbott’s patent relating to continuous glucose monitoring devices, in a judgment that provides important guidance on the assessment of added matter and, in particular, intermediate generalisations.

The added matter attack focused on the omission from claim 1 of EP 3 831 283 of an elastomeric sealing member disclosed in one embodiment of the application. Sibio argued that the claims impermissibly extracted the recess and coupling arrangement from this embodiment, while omitting the elastomeric sealing member that was disclosed in combination with those features. This was argued to amount to an intermediate generalisation.

The Court set out that the test at the UPC is the same as the so-called “gold standard” established by the Enlarged Board of Appeal of the European Patent Office in G2/01. In order to ascertain if there is added mater the Court must assess what the skilled person would derive directly and unambiguously from the application as filed. The relevant question was whether claim 1 without the elastomeric sealing member feature presents new technical information.

The Court noted that intermediate generalisations are objectionable where there is clearly a recognisable functional or structural relationship between the omitted feature and the retained claim features, described by the Court as an “inextricable link”.

The Court also considered the role of technical effect in the added matter analysis. Rejecting Sibio’s submission that technical effect was irrelevant, the Court held that the technical effect pursued by the invention, and whether the omitted feature contributes to that effect, may assist in determining whether the skilled person would understand the omitted feature to be structurally or functionally linked to the claimed combination. Technical effect forms therefore part of the assessment of whether an omitted feature is essential to the disclosed invention.

Applying that approach, the Court concluded that the elastomeric sealing member was neither functionally nor structurally linked to the claimed configuration. In the Court’s view, the electrical connection between the sensor assembly and electronics assembly was achieved by the mating of their contacts. The role of the elastomeric sealing member was merely to protect that connection rather than create it. The Court also considered the application as a whole and noted that other embodiments disclosed different sealing techniques, demonstrating that the use of an elastomeric sealing member was not presented as indispensable. A skilled person would therefore understand that the invention could be implemented with alternative sealing arrangements and would not regard the elastomeric sealing member as essential to achieving the technical effects of the invention. The omission of that feature consequently did not convey any new technical information.

In terms of the inventive step argument, the Court disagreed with the selection of WO 2011/119896 as the starting point. The arrangements in this prior art did not achieve the same objective as the patent, namely permitting the assembled on-body device to be freely moved over the skin before single-step application, so the Court considered it an unsuitable starting point for the obviousness analysis. However, even if the skilled person had started from that document, Sibio’s proposal to combine this disclosure with a US patent application would not have produced the claimed configuration or achieved the technical benefits identified by the patent.
 

New episodes: You, Me and the UPC: Case by case

Episode 82: Court of Appeal upholds injunction finding provisional measures necessary to prevent competitive harm

Episode 83: Court of Appeal clarifies the method for calculating Court fees in appeals in accordance with R. 220.1(a) RoP