CoA: The technical effect is relevant for the assessment of added matter (UPC-CoA-884/2025)
UPC Case Law | 05.11.2026
Court docket: Court of Appeal, Decision of 13.08.2026
UPC-CoA-884/2025 [EP 3 831 283]
Parties: Sibio v Abbott
Contributor: Danche Spirkoska Jovanov
Headnote
1. One situation where added matter may arise is when claimed subject-matter is obtained by importing one or more features from a certain embodiment in the application into a claim, while omitting one or more other features of this embodiment which were presented in combination with the imported feature(s) in the disclosure of this embodiment. This is referred to as an ’intermediate generalisation’. This is generally considered to be unallowable if there is a clearly recognisable functional or structural relationship among the omitted feature(s) and the claim features, also referred to ’an extricable link’ between the omitted feature(s) and the claim features.
2. The technical effect that the invention aims to achieve, and whether an omitted feature contributes thereto, is relevant for the assessment of added matter. It is relevant when considering whether the skilled person would understand from the disclosure of the application as a whole that there is a structural or functional relationship between the omitted feature and the other features of the claimed embodiment or, in other words, when considering whether there is an inextricable link with such other features or, yet differently worded, whether such omitted feature is essential to the invention.
Relevance of the decision
In this decision, the Court of Appeal considered the relevance of the technical effect for assessing added matter.
The dispute concerned an on-body device. Claim 1 required that the on-body device comprises a glucose sensor assembly, an enclosure, and sensor electronics positioned within the enclosure. A base portion of the enclosure comprises a recess and a connector support is received into the recess. The glucose sensor is electrically coupled with the sensor electronics by the connector support when the connector support is received into the recess.
The Appellant argued that the inclusion in claim 1 of features related to the recess without including an elastomeric sealing in the recess, constitutes added matter, either because this amounts to an unallowable intermediate generalization or because the omitted feature is essential to the invention.
The Court held that the concept of omitted essential feature is not a separate category of added matter. The only relevant test is whether claim 1 without the elastomeric sealing presents new technical information.
The Court further held that the technical effect the invention aims to achieve, and whether the omitted feature contributes to that effect, is relevant for the assessment of added matter.
The Court found that the omitted feature is not functionally related to the features of claim 1 and the achieved technical effect. The sealing (only) serves the protection of the connection, while it is the connector support in claim 1 which supports the electrical coupling of the assemblies (plug-and-socket from beneath).
Further, the Court found that the use of an elastomeric sealing in the recess of the enclosure is also neither structurally related to the features of claim 1 nor is an essential feature to the invention of claim 1. In reaching that conclusion, the Court emphasized that the assessment should not be restricted to the description of the embodiments that fall within the scope of claim 1. Rather, a proper understanding of the claimed embodiments requires an assessment in the context of the application as a whole. The Court held that the application teaches the skilled person various ways of achieving the sealing of the electrical contacts of the assemblies as an alternative for the use of an elastomeric sealing member in the recess. Therefore, the Court considered it irrelevant whether the claimed embodiment of Figs. 36 to 38 shows a sealing method similar to or different from the elastomeric sealing member described elsewhere in the application.
The Court’s emphasis on the relevance of the technical effect for assessment of added matter appears to be broadly consistent with the reasoning by the EPO BoA in Decision T 1762/21 in which the Board held that the skilled person would have regarded the omitted features as inextricably linked to the claimed ones if the skilled person would have regarded the omitted features to be necessary for achieving the effect associated with the added features.