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:
A task for experts -- or for judges?
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.

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).
PatLit has asked Colm for a copy of the decision and will make it available as soon as possible.


MaxDrei said...

One would think that the answer to the question "Is this a matter of law oir of fact" would be obvious. But then you study the caselaw of the USA and find out that it is not.

Debating with patent attorneys here in Germany, the distinction seems to go over their heads. That might be because i) they don't have juries and ii) the technical judges consider themselves to be the "person skilled in the art", so they decide both questions of law and of fact, without a second thought about whether they are the one or the other.

Anonymous said...

Max, the question of whether a finding of (lack of) obviousness is a matter of law or not becomes relevant for appealing a decision of the Federal Patent Court in a revocation action though.


MaxDrei said...

Good point, EdT. It seems that various courts can agree as to the ultimate conclusion "Does the claim contain within its ambit subject matter that is obvious: Y/N", that it is a matter of law, not fact. But we are not out of the Wood yet, are we?

How about the issue whether the underpinnings to that ultimate question are matters of fact or law. For example, whether the skilled person, on the televant date, would have switched from sodium to potassium. When patent attorneys advise their clients on what grounds for appeal are available, they might need to have a sure grasp of the law/fact distinction. I'm not even sure though, that patent judges in Mainland Europe always see the distinction like that.

Instead, I suspect that it is the degree of disquiet that Courts of Appeal have with the decisions of the Courts inferior, that determines whether they find any particular issue to be one of law rather than fact.