NJOY Netherlands v VMR Products (CFI, 22 January 2025)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

In a decision of 22 January 2025 (UPC_CFI_310/2023), the Paris Central Division ruled on NJOY Netherlands’ revocation action against VMR Products’ EP 3 613 453, which concerns an electronic cigarette with charging contacts. It held claim 1 invalid for lack of inventive step but maintained the patent in part on the basis of dependent claims 6, 7 and 8 in combination with claim 1 as granted. The decision is useful for practitioners on three points: late amendment requests justified by parallel opposition proceedings were held inadmissible, the burden of proving common general knowledge was allocated, and a request for partial maintenance was examined claim by claim.

Facts and procedure

The action, filed on 15 September 2023, relied solely on lack of inventive step. VMR Products filed 40 auxiliary requests, later reduced to eight, while an opposition was pending before the EPO (paragraphs 1 to 7). On 30 July 2024, following the outcome of the opposition, VMR filed a further request to amend and placed two new auxiliary requests at the top of its ranking (paragraphs 28 and 29). The oral hearing took place on 3 December 2024.

The applicable law

Article 65(3) UPCA allows the patent to be limited by partial revocation. Rule 30.2 RoP makes any subsequent request to amend subject to the Court’s permission. Inventive step is assessed under Article 56 EPC, with claims construed under Article 69 EPC and its Protocol. Costs follow Article 69(2) UPCA.

Question

Does claim 1 lack inventive step over the Pan prior art, are the late amendment requests admissible, and which dependent claims survive?

Decision

The claimant’s new exhibits were admitted because they responded to the Statement of Defence (paragraphs 24 to 27). The subsequent amendment requests were inadmissible: Rule 30.2 is a strict preclusion rule, and coordination with the opposition, raised for the first time, amounted to a change of strategy (paragraphs 32 and 33). The burden of proving common general knowledge lies on the party relying on it (paragraph 45). Pan discloses every feature of claim 1 except the position of the charging contacts, which the skilled person would have found in Weigensberg and in Trescher (paragraphs 95 to 110). No admissible auxiliary request saved the patent (paragraphs 113 to 137). The request for partial maintenance was sufficiently clear (paragraph 138). Claims 6 (a magnet near the contacts), 7 (two magnets of opposed polarity) and 8 (a metallic battery surface) were inventive, resort to the Griffin document being hindsight (paragraphs 147 to 175). The remaining claims were revoked and each party bears its own costs (paragraph 193).

Key points for practice

• Relying on the outcome of parallel opposition proceedings does not justify a late request to amend where that coordination was not announced in the initial pleadings (paragraph 33).
• A request for partial maintenance covering all dependent claims requires the division to examine each of them (paragraph 138).
• The party relying on the skilled person’s common general knowledge must prove it (paragraph 45).
• Practical point: a patentee should align its auxiliary requests and its EPO strategy from the Statement of Defence onwards, as Rule 30.2 is applied strictly.

Provisions applied

Agreement on a Unified Patent Court

Arts 54, 65(3), 69(2) and 73(1)

Rules of Procedure

Rules 13, 30.2, 44, 220.1(a), 224.1(a) and 263

European Patent Convention

Art. 56, 69, 84 and 138(3)

Case law cited

NanoString v 10x Genomics, Court of Appeal, 26 February 2024, UPC_CoA_335/2023, NJOY Netherlands v VMR Products, Paris Central Division, 29 November 2024, UPC_CFI_307/2023, Court of Appeal, 13 May 2024, UPC_CoA_1/2024, Court of Appeal, 28 May 2024, UPC_CoA_22/2024, Court of Appeal, 21 November 2024, UPC_CoA_456/2024, Paris Central Division, 27 February 2024, UPC_CFI_255/2023, Mannheim Local Division, 27 June 2024, UPC_CFI_210/2023, Paris Local Division, 3 July 2024, UPC_CFI_230/2023, Düsseldorf Local Division, 10 October 2024, UPC_CFI_363/2023, Munich Central Division, 17 October 2024, UPC_CFI_252/2023.

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.