Pari Pharma v Koninklijke Philips (UPC_CFI_613/2024)
Decision date:
27 November 2025
Osborne Clarke summary
- Pari Pharma GmbH (Pari) commenced revocation proceedings in the Milan CD against Koninklijke Philips concerning the latter's patent relating to a nebulizer head with improved air-flow guidance. Pari argued that claim 1 lacked novelty over a patent application (D1) and the prior use of the Pari eMotion device. It also asserted lack of inventive step over a combination of multiple prior art documents.
- As a preliminary point, the court considered what was required for a claimant to have standing to sue under Article 47(6) UPCA, which provides that proceedings may be brought by a party that is "concerned by a patent". This phrase is not defined in the UPCA, but the court stated it did not require "a specific legal or economic interest in the patent" and, for revocation actions, it at most excluded actions brought by 'strawman' claimants (acknowledging that this is the subject of academic debate).
- The court noted that there is no requirement in Rule 44 RoP for a claimant to explain its "concern" in the statement for revocation. It held that any person or entity potentially trying to ascertain their freedom to operate – and therefore any party (potentially) operating in the technical field of the patent – are “concerned” by it and have standing under Article 47(6) UPCA. It commented that standalone revocation actions were especially important for competitors of a patentee who might want to make sure they have freedom to operate in a certain field and therefore act safety with regard to developments and investments.
- D1 was a co-pending patent application that constituted prior art under Article 54(3) EPC for the purposes of novelty. It disclosed an aerosol delivery device in which the adaption element could be equipped with a mouthpiece. The court’s analysis turned on several contested features, particularly its construction of the bidirectional air-flow path and backside opening. The Milan CD stated that the skilled person will generally not directly and unambiguously deduce dimensions from schematic figures. However, a relatively simple orientation (versus a specific dimension) may be deduced from a figure.
- The Milan CD concluded that claim 1 as granted lacked novelty over D1 as the subject matter was directly and unambiguously disclosed in the prior art document. In light of this, the court noted that it was not decisive whether claim 1 also lacked novelty over the Pari eMotion device.
- The court rejected the defendant's first auxiliary request as inadmissible. Rather than lodging specific claims, the defendant had requested that, if the court did not uphold the patent as granted, it should maintain all claims that it believed to be valid, while revoking only the claims it believed to be invalid. The court emphasised that under Article 76.1 UPCA, it is the patentee’s responsibility to lodge amended claims stating the exact wording in which a patent shall be upheld. This was also reflected in the requirements of Rules 30.1 and 50.1 RoP. The first auxiliary request was therefore held to be inadmissible because it left the amendment to the court’s discretion. The court did, however, permit the defendant's second auxiliary request, finding the limited claim was novel and inventive over the prior art.
- The court ordered that the parties bear their own costs as they were "equally successful and unsuccessful". The claimant was successful on the main attack because the patent was upheld only in an amended version, but it was not entirely invalidated.
Issue
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