NJOY Netherlands v Juul Labs International (CFI, 17 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 17 January 2025 (UPC_CFI_316/2023), the Paris Central Division revoked in its entirety Juul Labs International’s EP 3 430 921, which concerns vaporisation devices, for Belgium, France, Germany, Italy, Luxembourg, the Netherlands, Portugal and Sweden, on NJOY Netherlands’ revocation action. The ground was added matter beyond the application as filed. The decision is of practical interest for its method of assessing added matter from an ambiguous parent application and for its handling of auxiliary requests filed less than a week before the oral hearing.

Facts and procedure

The action was filed on 13 September 2023, Juul’s preliminary objection concerning the designation of the party was rejected (paragraph 1.2). After the interim conference of 21 June 2024, Juul reduced its auxiliary requests to twelve on 30 October 2024, then filed a further application to amend on 13 November 2024, relying on the decision issued on 5 November 2024 by the same panel on its EP 3 498 115 (paragraphs 1.5 to 1.9 and 10.3). The oral hearing took place on 19 November 2024. The patent stems from a divisional application.

The applicable law

A patent is revoked if its subject-matter extends beyond the content of the application as filed (Article 138(1)(c) and Article 123(2) EPC). Claims are construed under Article 69 EPC and its Protocol, in line with Court of Appeal case law (paragraph 8.5). The Rules of Procedure govern the admission of late submissions and evidence (Rules 9, 32.3, 36 and 52) and of amendments (Rule 30).

Question

Do claims 1 and 11, which require the heater and the mouthpiece to be attached to an end of the fluid storage compartment, have a basis in the application as filed, and are the late auxiliary requests admissible?

Decision

“Attached” means fixing one existing object to another, and “end” refers to where the component sits (paragraphs 8.16 to 8.31). The parent application leaves open to which object the ends belong, and Figure 9 shows a heater and mouthpiece enclosing the ends rather than attached at an end: claims 1 and 11 contain added matter (paragraphs 9.17 to 9.34). The auxiliary requests of 13 November 2024, filed less than a week before the hearing and unrelated, as regards the heater, to the decision relied on, were inadmissible (paragraphs 10.4 and 10.5). The twelve auxiliary requests of 30 October 2024 were admitted but failed for added matter or lack of clarity (paragraphs 10.7 to 10.20). Juul bears the costs (paragraph 11.1).

Key points for practice

• A general feature (“attached to an end”) cannot be derived from a figure showing a more specific arrangement (enclosing the ends) (paragraphs 9.28 to 9.31).
• A decision handed down days before the hearing in a parallel case justifies a late amendment only for the issues it addresses (paragraph 10.5).
• Further submissions from either party going beyond a response to new arguments were disregarded (paragraphs 6.11 and 6.12).
• Practical point: for a divisional patent, the proprietor should check, before defending a generalisation, that it is disclosed unambiguously in the parent application as filed.

Provisions applied

Agreement on a Unified Patent Court

Arts 69, 73(1) and 82

Rules of Procedure

Rules 9.1, 9.2, 30.1(c), 32.3, 36, 52, 55, 58, 118.5, 220.1(a) and 224.1(a)

European Patent Convention

Arts 69, 76(1), 84, 123(2) and 138(1)

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, UPC_CoA_335/2023, VusionGroup v Hanshow, Court of Appeal, 13 May 2024, The Hague Local Division, 19 June 2024, UPC_CFI_131/2024, Paris Central Division, 5 November 2024, UPC_CFI_309/2023 (EP 3 498 115), Court of Appeal, UPC_CoA_438/2023 (preliminary objection).

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.