Luxembourg — UPC Confirms 'Gold Standard' Test in Sibio v Abbott

The Court of Appeal of the Unified Patent Court has confirmed that judges deciding whether an amended patent claim adds impermissible new subject matter must apply the same "gold standard" test the European Patent Office already uses, according to a Mondaq analysis of the court's ruling in Sibio v Abbott.

What Is the "Gold Standard" Test for Added Matter?

The "gold standard" is the European Patent Office's longstanding benchmark for judging patent amendments: an amendment is allowed only if the information it introduces would have been directly and unambiguously derivable by a skilled person from the application as originally filed, taken as a whole, according to the Mondaq analysis. Amendments that go beyond what was originally disclosed are treated as "added matter" and can be grounds to invalidate a patent or refuse an application.

What Did the Court of Appeal Decide in Sibio v Abbott?

In the dispute between Sibio and Abbott, the UPC Court of Appeal applied the gold standard test to assess whether contested claim amendments exceeded the content of the original filing, the Mondaq analysis states. The ruling settles a question patent practitioners had been watching since the UPC opened its first-instance divisions: whether the unified court, sitting outside the European Patent Office's own appeal system, would import the EPO's own test wholesale or develop a distinct UPC standard.

Why Does the Ruling Align UPC Practice With the EPO?

By adopting the gold standard directly, the Court of Appeal ties UPC validity decisions to decades of EPO Boards of Appeal case law on added matter, according to the Mondaq analysis of the decision. That matters for patent holders and challengers alike because it means arguments and precedent developed in EPO opposition and appeal proceedings should carry over into UPC infringement and revocation actions, reducing the risk that the same patent could be judged by two different added-matter standards depending on which forum hears the case.

Is This Related to the Matter Smart-Home Standard?

No. "Added matter" in the Sibio v Abbott ruling is a patent-law term describing new subject matter introduced during claim amendment — it has no connection to Matter, the smart-home connectivity standard maintained by the Connectivity Standards Alliance that governs how devices like locks, thermostats and lighting talk to each other. Readers who arrived looking for smart-home Matter protocol news can find HTT's coverage of recent connectivity updates in Matter Update Simplifies Smart Home Device Connectivity.

Where Can Readers Find the Underlying Analysis?

The full breakdown of the Sibio v Abbott ruling and its implications for UPC practice is available in the original Mondaq analysis, UPC CoA Confirms 'Gold Standard' For Added Matter In Sibio v Abbott, published via Google News and sourced from the original Mondaq report cited in the ruling coverage. The analysis situates the decision within the broader pattern of UPC divisions leaning on established EPO doctrine as the young court builds its own body of precedent.