NJOY Netherlands v VMR Products (CFI, 27 November 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 27 November 2024 (UPC_CFI_308/2023), the Paris Central Division revoked in its entirety VMR Products’ European patent EP 3 456 214, which concerns a vaporiser (electronic cigarette) with a window through which part of the cartomizer receiving chamber can be seen, on the application of NJOY Netherlands. Claim 1 was held to lack inventive step starting from Pan, combined either with the skilled person’s common general knowledge or with Lee. None of the ten auxiliary requests or the dependent claims saved the patent. The decision is chiefly of interest for its treatment of the front-loaded system: it sets out what a revocation claimant must plead in its statement of claim and what it may still file in reply, and accepts that a patent document may, exceptionally, evidence common general knowledge.

Facts and procedure

NJOY Netherlands filed the revocation action on 14 September 2023 for Austria, Belgium, Finland, France, Germany, Italy and the Netherlands, alleging lack of inventive step over Pan (US 2010/0242974) and Cross (paragraphs 1 to 4). VMR Products filed a conditional application to amend with 35 auxiliary requests, reduced to ten on 30 September 2024 (paragraphs 5 and 11). An order of 12 June 2024 under Rule 105 excluded late new grounds and new facts and evidence that did not directly respond to the other side’s arguments (paragraph 15). The oral hearing took place on 16 October 2024.

The applicable law

The Division relied on Rules 13, 44 and 263 RoP to define the scope of the pleadings, on Rules 30(1)(c) and 50(2) for conditional amendments, on Article 56 EPC for inventive step and Article 84 EPC for the clarity of amended claims, and on Article 65(3) UPCA for partial revocation (paragraphs 18 to 36, 110 to 116 and 152 to 154).

Question

What facts and evidence may a revocation claimant introduce after its statement of claim, and is claim 1, which adds a window to the cartomizer chamber of a known vaporiser, inventive?

Decision

The front-loaded system requires the claimant to set out its arguments and evidence in its first pleading, but it is applied in line with proportionality and procedural efficiency (paragraphs 18 to 22). In revocation proceedings, the grounds and prior art must be specified in detail. A new ground, a new novelty-destroying document or a new convincing starting point for inventive step amounts to an amendment of the case under Rule 263 (paragraphs 24 and 25). New facts and evidence are, however, admissible in the reply where they support facts already alleged and disputed in the defence, or the probative value of evidence already filed (paragraphs 27 to 29). Passages of the rejoinder that did not respond to the reply, and comments for which the procedure made no provision, were disregarded (paragraphs 31 to 35).

On the merits, the objective problem was to make part of the cartomizer chamber visible from outside (paragraphs 58 to 61). Pan disclosed every feature except the window, and providing a window in a non-transparent wall is common general knowledge (paragraphs 62 to 74). Although patent publications are generally questionable evidence of such knowledge, the author of Lee describing an approach as widely spread at the time may serve that purpose (paragraph 75). Lee also expressly taught a window for checking the liquid level (paragraphs 77 to 82). The auxiliary requests failed, auxiliary request IX for lack of clarity (paragraphs 84 to 115), as did the dependent claims (paragraphs 117 to 150). The request for partial maintenance, admissible in principle, was rejected because the claim combinations were not explained and the conditional amendments were not reasonable in number (paragraphs 151 to 154). Costs were awarded against VMR Products, with the value of the action set at EUR 500,000.

Key points for practice

• A revocation claimant must fix its grounds and starting documents from the outset: a new starting point for inventive step requires an application to amend under Rule 263 (paragraph 25).
• The reply may contain new facts and evidence if they answer the defendant’s challenge to facts already alleged or to the probative value of exhibits already filed (paragraphs 27 and 28).
• A request for partial maintenance combining dependent claims with an amended claim 1 must be explained and kept to a reasonable number (paragraphs 153 and 154).
• Practical point: a statement by the author of an earlier patent describing a solution as widely spread may prove common general knowledge, so such passages are worth looking for in the prior art.

Provisions applied

Agreement on a Unified Patent Court

Art. 65(3)

Rules of Procedure

Rules 13, 30(1), 32, 36, 44, 50(2), 51, 55, 58, 105 and 263

European Patent Convention

Art. 56, Art. 84 and Art. 138(3)

Case law cited

Court of Appeal, 26 February 2024, UPC_CoA_335/2023, Court of Appeal, 21 November 2024, UPC_CoA_456/2024, Paris Central Division, 29 July 2024, UPC_CFI_263/2023, Paris Central Division, 5 November 2024, UPC_CFI_309/2023, Munich Central Division, 17 October 2024, UPC_CFI_252/2023, Düsseldorf Local Division, 10 October 2024, UPC_CFI_363/2023, Paris Local Division, 3 July 2024, UPC_CFI_230/2023, Brussels Local Division, order of 8 July 2024, UPC_CFI_376/2023.

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.