NJOY Netherlands v Juul Labs (CFI, ORD_598482/2023, 5 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By decision of 5 November 2024 (UPC_CFI_309/2023, ACT_571669/2023), the Paris Central Division revoked Juul Labs International’s EP 3 498 115, which concerns a cartridge for a vaporisation device, for all the states concerned, at the request of NJOY Netherlands. Granted claim 1, from a second-generation divisional, extends beyond the content of the earlier applications, and none of the auxiliary requests succeeded. The decision matters chiefly for its principles on Art. 65(3) UPCA: the Division may limit the granted patent of its own motion, but it need not uphold only part of an amended claim set.

Facts and procedure

The revocation action was filed on 13 September 2023, Juul’s preliminary objection was rejected, which was confirmed on appeal. The patent, a divisional of a divisional of an international application, was subject to a pending EPO opposition to which NJOY was not a party. The proprietor filed a conditional application to amend, then twelve auxiliary requests, and requests to maintain the patent on the basis of dependent claims (requests 2(c) and (d)). The oral hearing took place on 10 September 2024.

The applicable law

The grounds for revocation are those of Art. 138(1) EPC, here extension beyond the content of the application as filed (Arts. 76(1) and 123(2) EPC). Claims are construed under Art. 69 EPC and its Protocol, in line with Court of Appeal case law (paragraphs 7.6 to 7.11). Art. 65(3) UPCA allows partial revocation. Art. 76(1) UPCA lays down the party-driven principle.

Question

Is granted claim 1, which has the mouthpiece affixed to the second end of the fluid storage compartment without requiring it to enclose that end, directly and unambiguously derivable from each of the earlier applications, and if not, must the Division examine combinations of dependent claims of its own motion?

Decision

The skilled person is a mechanical engineer experienced in electronic vaping devices, possibly assisted by an electrical engineer (paragraphs 7.12 to 7.15). For a second-generation divisional, the patent must be revoked if it extends beyond any one of the three earlier applications (paragraph 8.4). The proprietor bears the burden of showing that its amendments add no matter (paragraph 8.11). The only disclosed embodiment shows a mouthpiece enclosing the second end of the compartment, and no contrary example was identified (paragraphs 8.20 to 8.27), so granted claim 1 adds matter. Auxiliary requests 1 to 10 lack that limitation (paragraphs 9.6 and 9.7), requests 11 and 12 failed for lack of clarity (Art. 84 EPC), the proprietor having given no adequate explanation under Rule 50.2(b) RoP (paragraphs 9.8 to 9.14). As the grounds affect the whole patent, partial revocation was ruled out (paragraph 10.7). Request 2(d) was rejected as unclear, unreasonable in number under Rule 30.1(c) RoP and unsupported by argument (paragraphs 11.1 to 11.7). Costs were awarded against the proprietor (paragraph 12.1). Several late submissions from both sides were held inadmissible (paragraphs 5.15 to 5.17).

Key points for practice

• Even without an application to amend, the Division may, under Art. 65(3) UPCA, limit the granted patent and revoke it only in part where the grounds affect only part of it.
• An amended claim set is allowable or not as a whole: the Division need not uphold part of it, and each combination must be put forward as a separate auxiliary request.
• For a chain of divisionals, the claim must find a basis in each application in the chain.
• Practical point: proprietors should rank their requests, keep their number reasonable and argue each combination of dependent claims, failing which the Division may decline to examine them.

Provisions applied

Agreement on a Unified Patent Court

Arts. 65(3), 69, 76(1) and 82

Rules of Procedure

Rules 9.2, 30.1(c), 32.3, 36, 43.3, 50.2(b), 52, 55 and 118.5

European Patent Convention

Art. 69, Art. 76(1), Art. 84, Art. 123(2) and Art. 138(1)(c)

Case law cited

10x Genomics v NanoString, Court of Appeal, 26 February 2024, VusionGroup (SES-imagotag) v Hanshow, Court of Appeal, 13 May 2024, Umedwings v Abbott, The Hague Local Division, 19 June 2024, Mannheim Local Division, UPC_CFI_210/2023, 27 June 2024.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.