UPC Fujifilm v Kodak: Dependent Claims as Implicit Auxiliary Requests

In its recent decision in Fujifilm v Kodak, the UPC Court of Appeal addressed the role of granted dependent claims in revocation proceedings. The appeal arose after the Mannheim Local Division declined to consider Fujifilm's defence based on certain dependent claims and claim combinations because they had not been presented as auxiliary requests. The Court of Appeal overturned that approach and provided guidance on the circumstances in which granted claims may be relied upon without a formal application to amend the patent.

The Court held that a patentee need not file auxiliary requests to defend granted dependent claims or claim combinations already encompassed by the granted claims, provided those claims or combinations are clearly identified and sufficiently substantiated. The Court further stated that the number of claim combinations relied upon must be reasonable in the circumstances of the case.

In EPO opposition practice, patentees commonly submit auxiliary requests expressly setting out fallback claim sets on which they wish to rely if broader claims are found unallowable. By contrast, the UPC Court of Appeal held that where a patentee relies on granted dependent claims or claim combinations already encompassed by the granted claims, a formal auxiliary request is not required. Instead, the patentee must identify and substantiate the granted claims or claim combinations it wishes to defend.

The Court also emphasised that where grounds for revocation affect the patent only in part, the patent must be upheld in a valid limited form where possible. Consistent with that principle, the Court concluded that the Local Division should have considered the validity of the dependent claims and claim combinations relied upon by Fujifilm, rather than declining to consider them solely because no auxiliary request had been filed.

Applying these principles, the Court rejected Kodak's validity attacks, upheld the patent in the form resulting from Fujifilm's central limitation proceedings, and found infringement in Germany.

Decision(s): UPC_COA_473/2025; UPC_COA_474/2025; UPC_COA_873/2025; UPC_CFI_881/2026

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