PatLit has asked Colm for a copy of the decision and will make it available as soon as possible.
The Spanish Supreme Court has ruled that the question of obviousness in inventive step is a legal matter, in a judgment of 18 June which was notified just last week. This is an important development for a Court which has traditionally refused to review this matter on the grounds that it was factual and could only be reopened where the ruling of the lower court was shown to be completely irrational. The lack of binding case-law meant that the appeal courts in Spain’s seventeen different regions could adopt widely different approaches.
A task for experts -- or for judges?
The author of this judgment is Justice Sancho Gargallo. It is just the latest in a rapidly increasing body of Supreme Court patent case-law which is being led by a number of judges who, like him, have been promoted in the last few years from the Barcelona Appeal Court. A binding precedent has now been created as the ruling confirms the doctrine initially set out in the judgment of 14 April by the same author. It has far-reaching implications for both judges and lawyers, who have traditionally tended to leave the question of obviousness to expert witnesses, a quite extraordinary situation if one considers that these cannot be expected to have anything more than a superficial knowledge of the law. We can now expect to see not only a growing body of Supreme Court case law but also far more lively exchanges at first and second instance.
It is worth noting that the BGH similarly declared that obviousness was a legal question in 2006 (vorausbezahlte Telefongespräche and Demonstrationsschrank). This led it to instruct the German courts in 2010 to take the rulings of other contracting member states and of the EPO into account when deciding the question of obviousness for the same European patent (Walzenformgebungsmaschine).
Sunday, 26 July 2015
Obviousness -- not for experts
PatLit has just heard from our friend Colm Ahern (Elzaburu, Madrid) about the latest development involving patent litigation in Spain -- a development which some readers will welcome and others will dread. He writes: