19/05/2025
The recent decision in Abbott v SiBio by the Unified Patent Court (UPC) Court of Appeal provides valuable insight into how the Court is likely to handle two key areas of European patent law: added matter and functional claim language. The case, which centres on continuous glucose monitoring (CGM) technology, signals the UPC’s willingness to closely align with EPO principles, even without expressly saying so.
Case background
Abbott, a major player in the CGM space, owns European Patent 3831283 (“EP ‘283”), which it claims covers its widely marketed device. In late 2023, SiBio entered the European market via distributor Umedwings with a competing device alleged to infringe EP ‘283.
In response, Abbott sought a preliminary injunction from the UPC, The Hague Local Division in March 2024, aiming to block SiBio’s device in 15 UPC contracting states. SiBio countered with an invalidity challenge, alleging that EP ‘283 included added matter, due to the omission of a key feature—an “elastomeric sealing member”—from claim 1.
The Local Division agreed with SiBio and refused the injunction. But Abbott appealed, and the UPC Court of Appeal overturned that decision, offering important clarifications on how the UPC views added matter and functional claim drafting.
Added matter: a familiar, if not identical, standard
At the EPO, the gold standard for added matter is well established. The key is whether the skilled person, using common general knowledge and taking an objective view as of the filing date, would directly and unambiguously derive the amended subject matter from the application as filed, considered as a whole.
Would the UPC adopt the same standard?
Although the UPC Court of Appeal did not cite the EPO’s “gold standard” verbatim, its reasoning echoed it nearly word-for-word. The Court asked what the skilled person “would derive directly and unambiguously using his common general knowledge and seen objectively and relative to the date of filing, from the whole of the application as filed”. In practice, this is indistinguishable from the EPO approach.
The key issue was whether the omission of the elastomeric sealing member from claim 1 resulted in an impermissible intermediate generalisation. The Local Division believed so. However, the Court of Appeal disagreed, seemingly in line with principles established by the EPO.
At the EPO, amendments that remove features are only permitted if a) the features are not described as essential and b)”the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve“.
While several embodiments referred to elastomeric seals, the Court found that the original disclosure supported sealing more generally, with no emphasis on any specific sealing method being critical to the invention’s function.
In a significant comment, the Court observed that the sealing method was not “inextricably linked” to the claimed invention. The skilled person, it said, would understand that sealing was necessary—but the precise way in which sealing was achieved was not essential. As such, the omission did not amount to added matter.
This may suggest that, while the UPC is following EPO case law, it may take a slightly more holistic or pragmatic view of disclosure, focusing on technical function over rigid textual linkage.
Functional claim language: “configured to” means “suitable for”
The second major issue was the interpretation of functional claim language, particularly the phrase “configured to” in claim 1, which describes a sensor base “configured to be adhered to the skin surface”.
SiBio argued this was merely means-plus-function language, equivalent to saying the component was “suitable for” skin adhesion. That is, the component merely had the capacity to perform the function, without requiring any particular structural modification or design intent. Their aim was to broaden the scope of the claim during validity assessment, making it easier to knock out for lack of novelty. Abbott, by contrast, argued that “configured to” implied a specific adaptation, akin to “adapted to”, requiring some design intent or structure.
The UPC Court of Appeal sided with SiBio on the principle, agreeing that “configured to” should generally be interpreted as “suitable for”.
However, this wasn’t the end of the story. The Court went on to find that the prior art cited by SiBio, although possessing similar features, was not in fact suitable for skin adhesion under the meaning of the claim—particularly given the mechanical stresses faced by such devices in real-world use. So while the broader interpretation was accepted, SiBio’s novelty challenge ultimately failed.
The rest of the Court’s decision: injunction granted
After dismissing SiBio’s added matter and novelty arguments, and also rejecting its inventive step attack, the UPC Court of Appeal concluded there was a sufficient likelihood of infringement. It granted Abbott a preliminary injunction in all UPC contracting member states where EP ‘283 is in force.
Comment
Under Article 24 of the UPC Agreement, the UPC is required to apply the EPC. However, the UPC Agreement does not mention any explicit binding effect of EPO case law.
In Abbott v SiBio, the Court nonetheless chose to adopt EPO-style reasoning on both added matter and functional claim language.
While the decision does not establish binding precedent, it sends a strong signal: the UPC will likely align closely with EPO jurisprudence, at least in technical patentability matters.
That being said, the nuanced handling of added matter hints at a more contextual approach. The UPC may be more willing to look at function and technical contribution in deciding whether a feature is “essential”, rather than strictly tying itself to literal disclosure. While the Court of Appeal expressly endorsed a broad interpretation of “configured to”—equating it with “suitable for”—its application of that standard arguably narrowed the scope in practice. By closely analysing the specific technical problem addressed by the invention (i.e., the mechanical stresses experienced by on-body CGM devices), the Court effectively required a degree of suitability that presupposes functional reliability under those specific stresses. This introduces a contextual filter that aligns more with the narrower “adapted to” interpretation, despite the Court’s rejection of that phrasing. In doing so, the Court appears to blur the line between the two standards, suggesting that “suitability” may still be informed by the invention’s technical context, thereby softening the apparent breadth of its claim interpretation.
In short, Abbott v SiBio offers us a valuable glimpse of how the UPC is likely to navigate familiar European patent law issues—with a nod to EPO traditions, but with room for evolution.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
