NJOY Netherlands v VMR Products (CFI, 21 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 21 January 2025 (UPC_CFI_311/2023), the Paris Central Division dismissed NJOY Netherlands’ revocation action against VMR Products’ EP 3 626 092, which concerns an electronic cigarette whose cartomizer has a translucent portion through which the liquid can be seen, and maintained the patent as granted. Its practical interest lies in the application of front-loading, which led to several late combinations of prior art being disregarded, and in one point to watch: the operative part orders the defendant to bear the costs, whereas paragraph 88 places them on the claimant as the unsuccessful party.

Facts and procedure

The action, filed on 15 September 2023, covered 16 territories and alleged lack of inventive step over Pan or Cross, combined with Lee or common general knowledge. VMR Products filed a conditional application to amend, with auxiliary requests later reduced to ten. An opposition is pending before the EPO. Following the interim conference of 15 May 2024 and a judge-rapporteur’s order of 12 June 2024 on late material (Rule 105), the oral hearing took place on 5 December 2024 (paragraphs 1 to 14).

The applicable law

Inventive step is assessed under Article 56 EPC. The Rules of Procedure provide for front-loaded written proceedings (Preamble, paragraph 7, and Rules 13, 30, 32, 36, 44, 51, 55 and 58), which the division enforces with due regard to proportionality (paragraphs 21 to 25).

Question

Are arguments and documents introduced in the reply or rejoinder admissible, and does claim 1 lack inventive step over Pan or Cross?

Decision

New material is admitted where it responds to the defence, but late new grounds or documents are excluded (paragraphs 27 and 32), arguments raised for the first time in the rejoinder, certain exhibits and the defendant’s comments of 10 May 2024 were disregarded (paragraphs 36 and 37). The dispute over the translation of Lee was immaterial (paragraphs 39 and 40). Pan discloses every feature except the translucent portion of the cartomizer. Making Pan’s atomizer tube translucent would not let the user see the liquid, and neither Lee nor common general knowledge pointed the way (paragraphs 64 to 74). Cross, which uses a solid substance, is not a realistic starting point, and transparency would not have been obvious in any event (paragraphs 79 to 83). Combinations with Duke, Tucker and CAS, raised only in the reply, were late (paragraphs 75 and 85). The value of the action was confirmed at EUR 500,000 (paragraph 89).

Key points for practice

• The division rejected the patentee’s formulation of the technical problem (“improved user experience”) as too vague (paragraph 61).
• Combinations of prior art absent from the statement for revocation may be introduced in the reply only if they respond to the defence (paragraphs 32 and 75).
• The operative part (costs borne by the defendant) contradicts paragraph 88 (costs borne by the claimant as the unsuccessful party). Only the official text is authoritative on this point.
• Practical point: a revocation claimant should plead all its prior art combinations in the statement for revocation.

Provisions applied

Rules of Procedure

Rules 13, 30.1(b), 32, 36, 44, 51, 55, 58, 105 and 263

European Patent Convention

Art. 56

Case law cited

NanoString v 10x Genomics, 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, Brussels Local Division, 8 July 2024, UPC_CFI_376/2023, Paris Local Division, 3 July 2024, UPC_CFI_230/2023, Munich Central Division, 17 October 2024, UPC_CFI_252/2023, Düsseldorf Local Division, 10 October 2024, UPC_CFI_363/2023.

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.