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Propiedad Industrial e Intelectual

The revocation of the patent by the EPO does not enable the patentee to close infringement proceedings

The Decision dated 24 July 2014 of the Appeal Court of Barcelona has considered in patent infringement proceedings that when the patent is revoked by the EPO the defendant has a legitimate interest in continuing the proceedings in order to obtain a final Judgment that dismisses the infringement main claim and decides whether to condemn the plaintiff to pay court costs.

In the case at hand the patentee brought infringement proceedings against several companies based on a patent that was under opposition before the EPO.

Some defendants answered the main claim by saying that the patent infringement should be dismissed because the patent would have been obvious for the expert in the art according to the state of the art available before the application date of the patent. This claim was filed merely as a defense in the proceedings.

Other defendants filed a counterclaim requesting the nullity of the patent for lack of inventive step. In addition they also said that the infringement claim should be dismissed because the patent was null and void, as it was said by other defendants.

During the prosecution of the proceedings the EPO decided to revoke the patent. As a consequence of the revocation the plaintiff requested the termination of the Spanish proceedings without condemning any of the parties to pay court costs. The request of the plaintiff was based on the fact that the subject matter of Spanish proceedings would have disappeared subsequently according to article 22 of the Spanish Civil Procedure Act.

Commercial Court nº 6 of Barcelona rendered a Decision dated 28 February 2013 granting the request of the plaintiff. The Decision was appealed by some defendants before Section 15 of the High Provincial Court of Barcelona.

The Appeal Court of Barcelona in its Decision abovementioned although it has decided to close the nullity proceedings of the patent, which was initiated by a counterclaim filed by some of the defendants, it has considered that the defendants hold a legitimate interest to obtain a Judgment dismissing the infringement claim of the plaintiff since the revocation of the patent should not be understood as a subsequently lack of subject matter of the proceedings but as the impossibility to grant the orders of the infringement patent claim.

The nullity of the patent has an ex post facto effect, so it means that the patent had never existed (article 114.1 of the Spanish Patent Act). Therefore if the patent had never existed the patentee would have never had the right to file infringement proceedings.