On 31 July 2026 the Paris Local Division of the UPC issued its decision on an infringement action brought by Bostik Inc., against the Henkel Group. Henkel filed a counterclaim for revocation of Bostik’s allegedly infringed patent, EP 1725627. Henkel had unsuccessfully opposed the patent before the EPO Opposition Division in 2009 on the grounds of added matter, but did succeed on this ground before the UPC. Bostik’s patent was therefore declared invalid.

On 13 August 2026 the Court of Appeal of the UPC issued a decision on Sibio Technology Limited’s appeal regarding an unsuccessful revocation action brought against a patent (EP 3831283) held by Abbott Diabetes Care Inc. It was alleged by Sibio that Abbott’s patent was not valid on the grounds of added matter. Sibio’s appeal was likewise unsuccessful. 

Bostik v Henkel

In the case of Bostik v Henkel, the patent at issue pertained to peelable and non-resealable packaging, and in particular, a claim feature regarding a minimum cohesive strength of a cold-seal coating. The patent application disclosed a minimum value for ‘bond strengths’, of which there are two kinds: 

(i) adhesive strength, which quantifies the coating’s ability to stick to the packaging, and 
(ii) cohesive strength, which quantifies the coating's ability to stick to itself. 

Henkel argued that the claims comprised added matter because the originally filed application did not directly and unambiguously disclose a minimum cohesive strength, and that it was an intermediate generalisation as the originally filed application was alleged to state that the cohesive strength must be greater than the adhesive strength. Bostik argued that the patent was valid but also provided three auxiliary requests. 

The court agreed with Bostik that the claim feature at issue, a minimum value of the cohesive strength, was implicitly disclosed by the original application. However, when the court analysed the issue of added matter and intermediate generalisation more broadly, the omission of a minimum adhesive strength in addition to the minimum cohesive strength meant that the claim contained an unallowable intermediate generalisation. This was due to the court’s interpretation of the defined minimum value for ‘bond strengths’ which was thus required to be exceeded by both the adhesive and cohesive strengths. Because of this, Bostik’s patent was found to be invalid as it claimed subject matter which extended beyond the disclosure of the original application. 

It is also notable that, as described in point 80 of the Paris Local Division’s decision, none of Bostik’s auxiliary requests were considered, as they had not addressed the added matter issue. 

This difference in outcomes between the EPO opposition and UPC revocation counterclaim may seem surprising at first glance, but Bostik v Henkel does not necessarily represent a divergence between EPO and UPC practice. Whilst the UPC found the patent invalid on the grounds of added matter, where this was not the case before the EPO, this was primarily due to the Opposition Division having refused to consider the added matter argument as it was raised at a late stage in the proceedings. As pointed out at point 68 of the Paris Local Division’s decision: 

‘The EPO did not assess the question of added-matter, during the grant procedure and the opposition phase.’ 

It is not therefore strictly accurate to say that the EPO and UPC decided differently, as the EPO determined that the ground of added matter was not prima facie relevant. The legal landscape has changed significantly since 2009. It is therefore impossible to say with any certainty whether the Opposition Division would have made the same decision had the argument been raised earlier in proceedings and they had to, so to speak, get stuck in. 

Sibio v Abbott

In the case of Sibio v Abbott, the patent at issue pertained to on-body glucose sensor assemblies, and in particular, a claim feature of a recess of an enclosure. It was argued by Sibio that this recess was an intermediate generalisation as the claim lacked a feature defining an ‘elastomeric sealing’. The UPC found that this was not the case, as the application disclosed many kinds of sealing, and while sealing was necessary in general, the specific type was not linked to the technical effect achieved by the other features of the claim of creating an electrical connection. In other words, the embodiment of claim 1 would work with a different kind of sealing. 

The UPC stated in point 30 of the decision that they use the same ‘gold standard’ for added matter as the EPO, with which IP practitioners will be familiar. Amendments must be directly and unambiguously disclosed by the application as originally filed, including implicit disclosures. However, in point 34, the UPC stated that the evaluation of added matter in UPC proceedings would consider added matter more broadly rather than attempting to fit such evaluation into a prescriptive test for intermediate generalisations or omissions of essential elements – in particular stating that whether the EPO would categorise such an amendment as one or the other was ‘irrelevant’.

The EPO does treat these differently. For an intermediate generalisation to be allowable, it has to be established that the feature is not related or inextricably linked to the other features of the particular embodiment and the overall disclosure needs to justify the generalising isolation of the feature and its introduction into the claim. Omitting an essential feature is different, as it is not permissible to omit from an independent claim any feature which the application as originally filed consistently presents as being essential to the definition of the invention. The presence of an inextricable link to other features is not a requirement for a feature to be essential. 

However, in the Sibio v Abbott decision, these tests have been combined somewhat by the UPC in a more general way:

“35. … 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 matters 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.” 

Comparing this approach to standard EPO practice, it is clearly the intent of the UPC to align with the EPO at least so far as the standards for added matter are concerned. It may be worth exercising caution before the UPC regarding reference to specific tests or categorisations, such as ‘intermediate generalisation’ used in EPO proceedings, as a broader consideration of ‘added matter’ may be taken. Functionally though, it appears that the UPC may consider two features to be inextricably linked where both features contribute to the same technical effect, when considering the application as filed as a whole. It may be arguable that this is a narrower interpretation of the test for added matter, which may therefore be more generous in regards to allowable intermediate generalisations. 

Implications for the assessment of added matter 

Bostik v Henkel does not suggest a divergence per se between the EPO and UPC on added matter, but it does underline that the procedures before the EPO and UPC are separate, and the fact that an action fails before the EPO does not mean the same conclusion will be reached before the UPC. It also shows that the UPC will consider such issues broadly. 

Similarly, Sibio v Abbott suggests the UPC might take a broader look at added matter rather than focusing on specific categories used by the EPO, but the overall aim still essentially equates to conformity to the same ‘gold standard’ for added matter. One key takeaway should be ensuring that technical links between features, or the lack thereof, are clearly disclosed in the application as filed. 

Case details at a glance

Case 1: 

Jurisdiction: UPC
Decision level: Court of First Instance - Paris Local Division
Parties:  Bostik, Inc. v Henkel Group
Date: 31 July 2026
Citations: UPC_CFI_583/2025
Decision: https://www.unifiedpatentcourt.org/en/node/183981

Case 2: 

Jurisdiction: UPC
Decision level: Court of Appeal - Luxembourg (LU)
Parties:  Sibio Technology Limited v Abbott Diabetes Care Inc.
Date: 13 August 2026
Citations:  UPC-COA-0000884/2025
Decision: https://www.unifiedpatentcourt.org/en/node/184036