By virtue of a Judgement dated 29 March 2019, the Court of Appeal of Barcelona upheld the Judgement of 20 February 2017 ruled by the Commercial Court No. 1 of Barcelona that revoked the Spanish part of European patent EP 1 379 220 (EP’220).
The plaintiff filed proceedings for revocation of EP’220 due to lack of novelty and inventive step.
In the reply to the revocation suit, the patentee did not defend the patent as granted by the EPO but filed a counterclaim based on Article 138.3 EPC limiting the patent and requesting the revocation action to be dismissed and the patent to be maintained as amended.
The plaintiff then petitioned the counterclaim to be dismissed because the patent in its limited version did not meet the requirements for added subject-matter (Article 123.2 EPC) and inventive step (Article 56 EPC), as, according to the prior art, it was still obvious to a person skilled in the art.
There have been few decisions in Spain related to added subject-matter, some of them regarding interim injunctions. This is the second time that the Spanish Courts have conducted an in-depth assessment of Article 123.2 EPC. The Court of Appeal of Madrid ruled the first major Judgement on 3 May 2013 on the case between European Central Bank v Document Security Systems Inc. We believe that in the following years added subjectmatter will be a major ground for revocation that may frequently be assessed by the Spanish Courts, as is in fact now taking place in the EPO.
The Judgement of the Court of Appeal of Barcelona acknowledged that all the features of the limited version of the patent were present in the original application of the patent, but they were not present in the specific combination of the patent that the patentee filed with its counterclaim.
According to the Judgement, the combination of features stemmed from a selection of elements from different lists in the application as originally filed with no pointer to that specific combination. The selection also disregarded other elements that were disclosed in the original application together with the selected elements. Therefore, the Court concluded that the new version of the patent was the result of a combination that was not directly and unambiguously derivable from the application as filed.
When reaching this conclusion, the Court applied the approach of the case-law of the EPO, quoting several Decisions of the Technical Boards of Appeal.
Although patent EP’220 has been declared null and void in other jurisdictions, to the best of our knowledge, Spanish courts have been the first to declare revocation of the patent due to added subject-matter. However, the wording of the limitation that the patentee filed in Spain was not filed in any other country.
Obviousness (lack of inventive step)
The Judgement also dismissed the counterclaim because it considered that the new version of the patent did not meet the requirement for inventive step since, regarding the prior art, it was obvious to a person skilled in the art.
As it has been common practice over the past 10 years, the Court of Appeal of Barcelona assessed the requirement for inventive step according to the problem-solution approach developed by the EPO.
In this case, there are two major issues worth mentioning in this piece of news: (i) the scope of disclosure in the closest prior art; and (ii) the formulation of the objective technical problem as an alternative.
Regarding point (i), the Court of Appeal of Barcelona considered that a patent application was the closest prior art. The patentee sustained that the disclosure in the closest prior art should be limited to an example in this patent application. However, the Judgement considered that there was no reason to disregard the rest of the document and, in particular, the problems disclosed therein and the way that such problems were approached in such patent application.
In relation to point (ii), the Court of Appeal acknowledged that the problem in the patent EP’220 had not only been dealt with in the closest prior art, but it had also been solved thereby, albeit in another way. Therefore, the objective technical problem was seen as an alternative. Interestingly, the Judgement stated that the fact that the problem was solved by the closest prior art does not mean another alternative that solves the same problem could not also be obvious.
The amendment filed by the patentee outside the proceedings for revocation
During the appeal, the patentee further tried to limit the patent in the Spanish Patent and Trademark Office (SPTO) using different wording to that used in the revocation proceedings filed. The request was made without informing the Court thereof.
The SPTO granted the new version of the patent. Therefore, the patentee requested termination of the revocation proceedings based on a lack of object arising.
The termination of the proceedings was dismissed, but this was decided by the Court of Appeal by means of an Order dated 15 October 2018 and not by the Judgement. In such Order the Court of Appeal stated that the request filed in the SPTO did not meet the provisions in Article 105.4 of the Spanish Patent Act which states: “When legal proceedings concerning the validity of the patent are pending […], the request for limitation submitted to the Spanish Patent and Trademark Office shall be authorised by the Judge or Court hearing the proceedings”. As the new version of the patent was filed without the authorisation of the Court, the Court of Appeal dismissed the request for termination of the revocation proceedings.
The Order did not adopt a decision on the validity or invalidity of the version of the patent that was granted by the SPTO. However, in its Judgment the Court of Appeal sustained that since the limitation filed with the counterclaim in the revocation proceedings is inadmissible, not only must the patent as originally granted by the EPO be revoked but also any subsequent publication of the amended text. Therefore, the Judgement must extend its effects both to the patent granted by the EPO and to its subsequent amendment.
Neither the Order dated 15 October 2018 nor the Judgement mentioned hereby assessed a further issue: Whether a voluntary request for limitation of a European patent can be filed in the national patent offices or whether it must be filed in the EPO in order to preserve, when possible and as a general principle, the unitary text of the European patent (Article 118 EPC). In fact, the Act revising the EPC introduced a central procedure for administrative limitation by the EPO (Article 105 bis EPC): “At the request of the proprietor, the European patent may be revoked or be limited by an amendment of the claims. The request shall be filed with the European Patent Office in accordance with the Implementing Regulations”.
The judgement is not yet final as an appeal in cassation and an extraordinary appeal for procedural infringement have been lodged by the patentee with the Supreme Court.