In UPC_CoA_884/2025, Court of Appeal, 13 August 2026, the Unified Patent Court (UPC) considered when omission of a feature from an embodiment amounts to an unallowable intermediate generalisation. The decision clarifies the relationship between the general added-matter test, the concept of intermediate generalisation and the question whether an omitted feature is essential to the invention.
Background
The case concerned Abbott Diabetes Care Inc.’s EP 3 831 283 relating to an on-body device for in vivo glucose monitoring. The Paris Central Division had dismissed Sibio Technology Limited’s revocation action and maintained the patent as granted.
On appeal, Sibio argued, among other things, that independent claims 1 and 15 contained added matter under Article 65(2) UPCA and Article 138(1)(c) EPC. For claim 1, the contested features concerned a recess in the bottom exterior surface of the enclosure, into which the connector support is received to electrically couple the glucose sensor with the sensor electronics. An embodiment disclosing such a recess also disclosed an elastomeric sealing member within it. The claim did not require that sealing member.
Intermediate generalisation and the added-matter test
The Court started from the established test: the relevant question is what the skilled person would derive directly and unambiguously, using common general knowledge, from the application as a whole. The Court expressly equated this with the EPO Enlarged Board of Appeal’s “gold standard” in G 2/10 (paras 30–32).
The Court then addressed intermediate generalisation specifically. Such a situation may arise where features are taken from a particular embodiment while other features disclosed together with them are omitted. According to the Court, this is generally unallowable where there is a clearly recognisable functional or structural relationship between the omitted feature and the claimed features (para 33).
Sibio also characterised the elastomeric sealing member as an “essential element”. The Court did not treat this as a separate added-matter test. What remained decisive was whether omission of the feature resulted in claimed subject-matter extending beyond the application as filed. Nevertheless, whether the omitted feature contributes to the technical effect of the invention is relevant when determining whether such a functional or structural relationship exists and whether the feature is essential (paras 34–35).
Why the sealing member could be omitted
On the facts, the Court distinguished the function of the claimed recess and connector arrangement from that of the elastomeric sealing member. The connector support and recess provided the electrical coupling between the sensor and electronics assemblies. The sealing member protected that electrical connection; it did not create the connection (paras 38–41).
Importantly, the Court considered the application as a whole rather than only the embodiment from which the relevant claim features had been taken. Other passages disclosed recesses together with different sealing solutions. These alternatives showed that an elastomeric sealing member was not structurally tied to the claimed recess and was not necessary to achieve the relevant technical effect (paras 42–54).
The Court also distinguished omission of a particular sealing solution from a teaching that no sealing was required. The skilled person would understand, based on the application and common general knowledge, that electrical contacts still required appropriate sealing. Consequently, omission of the elastomeric sealing member did not provide new technical information (para 55).
The Court therefore found no inextricable functional or structural link between the particular elastomeric sealing and the other features of claim 1. The same reasoning applied to method claim 15, and the added-matter attack failed (paras 58–60).
Analysis and implications
The decision illustrates that an intermediate-generalisation objection cannot be assessed solely by asking whether features were originally disclosed together in one embodiment. The disclosure as a whole, the respective technical functions of the retained and omitted features, and disclosed alternatives may show that the omitted feature is not inseparably linked to the claimed combination.
It also confirms that “essentiality” is not an autonomous category of added matter. Rather, the contribution of an omitted feature to the technical effect forms part of the broader enquiry into what the skilled person directly and unambiguously derives from the application.
