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Propiedad Industrial e Intelectual

New trends on inventive step from the Supreme Court

Spanish Supreme Court has issued three consecutive Judgments dated 14, 29 April and 18 June 2015 in the cases of escitalopram, docetaxel and levonorgestrel, respectively, stating some interesting approaches on nullity proceedings of European patents and on the analysis of the inventive step requirement.

Although the first Judgment mentioned above was not related to the nullity of a patent, but to patent infringement (see our comment dated 12 June 2015), it make reference to the importance that has to be given to the doctrine (guidelines and case-law) of the European Patent Office (EPO). The Judgment states that the guidelines of the EPO are not more than that, thus, guidelines that the EPO gives to their examiners that cannot bind national courts. The same happens with the decisions of the EPO, because although a patent may be considered valid by the EPO the validity of the patent shall be analysed by national courts with full independence of what has already been decided by EPO. In fact, every time that a national court decides on the nullity of patent it is issuing a decision against what has been already decided by the EPO.

However, in the end, the Judgments dated 29 April and 18 June 2015 Supreme Court have followed the doctrine of the EPO in relation to the doctrine on the ‘reasonable expectation of success’ to consider that a claim lacks inventive step (see Decisions EPO T 149/93, point 5.2; T 207/94, point 31; Case-Law, p. 185).

In this sense, the Supreme Court has stated that it is not necessary to consider that a patent claim is obvious that the party who challenge the patent shows that the embodiment of the claim was deduced from the state of the art with a level of proof that did not admit any other alternative, but that the expert in the art derive the solution to the technical problem at least with a ‘reasonable expectation of success’, that should not be confused with the understandable ‘hope to succeed’. According to T 207/94 (OJ 1999, 273), the ‘hope to succeed’ was merely the expression of a wish, whereas a ‘reasonable expectation of success’ presupposed scientific appraisal of available facts (Case-Law, p. 185).

The question now is whether this Spanish case-law is to be understood as it brings a new sine qua non requirement to consider that a patent claim is obvious or a mere possibility to approach the lack of inventive step. In this sense, it has to be taken into account that every invention is different, thus it is doubtful that obviousness is approached in all cases on a basis of a ‘reasonable expectation of success’ of the embodiment of the claim according to the state of the art.