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Propiedad Industrial e Intelectual

Spanish Supreme Court comes up in line with House of Lords of England and Wales on patent infringement

This is a continuation of our comment published on this website dated 13 February 2013.

Judgment dated 7 November 2014 of Civil Board of Spanish Supreme Court upheld Judgments dated 27 December 2012 of Section 28 of the Appeal Court of Madrid and 31 May 2010 of the Commercial Court nº 2 of that same city dismissing a patent infringement claim based on a formulation patent on pharmaceutical technology.

Supreme Court interprets article 69 EPC and the Protocol on the Interpretation of that article according to the specific proven facts and the wording of the patent invoked by the plaintiff in order to review whether the Appeal Court issued its Judgment according to the applicable law and the Supreme Court doctrine on patent infringement.

As a preliminary question, the Supreme Court states that it can only revise the construction of the scope of a patent in exceptional cases, when the Judgment does not follow legal and case law rules and when it is arbitrary or falls into a notorious mistake, since that interpretation is within the exclusive jurisdiction of the first and second instance courts.

In accordance with the judgment of the Supreme Court, article 69 EPC does not permit a literal interpretation of the claim, but it accepts a spiritual criteria in seeking the real meaning of the content of the claim, beyond the words used in it. In this sense, the Judgment reminds that the interpretation of the claim according to the description of the patent may achieve a result stricter than the one resulting from a literal meaning of the claim.

Although words may have different meanings depending on the purposes for what they are used, the right meaning is that one based on the specification of the patent that should be understood as the dictionary of the claim. Lord Hoffmann in the judgment of 21 October 2004 of the House of Lords of England and Wales Kirin-Amgen Inc. v Hoechst Marion Roussel was expressing indeed this same opinion in interpreting the words of Lord Diplock in the previous landmark decision  of the same court, rendered twenty two years before at Catnic Components Ltd v Hill & Smith Ltd“Lord Diplock was in my opinion being much more specific and his intention was to point out that a person may be taken to mean something different when he uses words for one purpose from what he would be taken to mean if he was using them for another”.

In interpreting the words of the claim of the patent invoked in the proceedings of the judgment that is being commented, the Supreme Court pays special attention to the problem solved according to the wording of the description. Therefore the meaning of each element of the claim needs to be consistent with the aim of the invention disclosed in the description. Supreme Court states that the claim cannot be interpreted as encompassing any embodiment that achieves the same result regardless of the problem solved in the description, because an invention is not the result achieved by the claim but amodus of obtaining that result.

As a conclusion we may say that in fact the Supreme Court in its judgment confirms the legal interpretation of the scope of the patent that has been developed in the last twelve years by the specialised Sections 15 and 28 of both the High Provincial Courts of Barcelona and Madrid respectively.