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Propiedad Industrial e Intelectual

Spanish Supreme Court interprets the second question of the Protocol Questions proposed by the House of Lords of England and Wales on patent infringement

We published a previous post in this website headed “Spanish Supreme Court comes up in line with House of Lords of England and Wales on patent infringement” dated 10 March 2013. In the new Judgment of 29 April 2015 commented here, the Spanish Supreme Court has developed its own interpretation on the second question of the Protocol Questions proposed by the House of Lords of England and Wales in Catnic Components Ltd. v. Hill & Smith Ltd. [1982] R.P.C. 183 and in Improver Corp. v Remington Consumer Products Ltd. [1989], 69.

In the Improver case, the House of Lords proposed the following questions in order to analyse whether a certain feature of an embodiment falls within the scope of a patent claim:

(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no?

(2)  Would this (ie that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art? If no, the variant is outside the claim. If yes?

(3)  Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention? If yes, the variant is outside the claim.

In the case at hand, The Court of Appeal of Barcelona, in the Judgment appealed before the Supreme Court, considered that the answer to question (1) should be ‘No’, but it considered that the answer to question (2) should be either ‘No’. In doing so, the Court stated that the feature of the embodiment of the defendant considered as equivalent to the feature claimed in the patent was not obvious at the date of priority of the patent to a reader skilled in the art.

In the appeal of cassation before the Supreme Court, the appellant considered that obvious should mean what is not inventive, thus suggesting that the court should apply the same approach used in the analysis made to examine the inventive step requirement. In the opinion of the appellant, ‘obvious’ should be understood as whether a third party would have considered the variant of the embodiment with reasonable expectations of success and not if it would have had the absolute certainty that the variant would work.

The Supreme Court accepts the approach of the Appeal Court of Barcelona in the sense that ‘obvious’ means something easy to see or to understand and according to its etymology obvious means that lies in the road; in that sense, ‘predictable’. The Supreme Court rejects therefore the approach suggested by the appellant, in the sense that obvious, from an infringement point of view, should be understood as the mere ‘possibility of success’;  that the expert in the art ‘would have felt motivated to try’ the alternative ‘with an expectation of success’.

By this new Judgment, the Supreme Court reminds that the analysis made to examine the inventive step requirement is different to the analysis made in a case of infringement. This is the reason why the court rejected the approach proposed by the plaintiff. Following the argument of the Supreme Court, in relation to inventive step the analysis is not made element-by-element of the claimed invention, but the invention is to be considered as a whole; and it is the possible obviousness of this invention as a whole that has to be decided with regard to the state of the art. In contrast, when considering infringement, the analysis shall be made by comparing each element of the invention to those variants of the product or process that are accused to infringe the patent.

In this sense, the Judgment of the Supreme Court also makes reference to the fact that it may happen that a certain embodiment although considered to be inventive, it infringes a previous patent. Up to the court, this may happen when the posterior embodiment, by using the same features of the previous patent, solves the same technical problem of that patent and, by using other features not obvious according to the previous patent, another different technical problem is solved. Or, conversely, it may happen that an embodiment is not considered inventive because as a whole it is obvious from the state of the art to an expert in the field, but that it does not infringe a prior patent because the variant is not considered obvious for an expert in the art at the priority date of the patent that is allegedly infringed.