Barcelona court cites EPO decisions for the first time

Ignacio Marqués, from Baker & McKenzie's Barcelona office, has written to tell PatLit about a recent decision of the Court of Appeals of Barcelona (IP Section), which has applied EPO case law in order to decide on the novelty of Spanish inventions. Says Ignacio:

"It has become customary for the Audiencia Provincial de Barcelona (Barcelona Court of Appeals – the first specialised IP Court in Spain) to apply the European Patent Convention in patent cases. This time however, a recently published judgment of the Audiencia dated 5 May 2009 goes a step further by elaborating on the novelty requirement by citing (and applying) the doctrine emanating from the EPO’s Board of Appeals.

In order to assess the validity of a Spanish patent, the Court applied Articles 9.2 (“implicit features or well-known equivalents”) and 9.6 (“implicit disclosure and parameters”) of the Guidelines for Examination in the EPO, which is no longer an exotic piece of literature for patent litigators in Spain. The Court then stated that, when assessing the novelty requirement in the course of a Spanish patent/utility model cancellation action, the Court must apply the “explicit” and “implicit” novelty doctrine as developed by the EPO’s Boards of Appeal in Decisions T 12/81, T 140/94, T 658/92, T 793/93 and T 101/98.

According to the reported Judgment, a patent will be anticipated if it is shown to be derived implicitly ofrom a prior publication, provided that an “expert skilled in the art” would inevitably reach the invention as described in the prior publication (even though the patented invention is not explicitly mentioned in the prior publication)."

Thanks, Ignacio -- we really appreciate your effort to keep our readers informed.

Taking account of foreign and EPO decisions

The May 2009 issue of 10-times-a-year journal Patent World contains the usual assortment of contentious, litigious and financial items from the world of monopoly-protected innovation. One such item is an article by Gregor König (König Szynka Tilmann von Renesse) on the ruling of the Bundesgerichtshof late last year that Eli Lilly's olanzapine patent was both novel and non-obvious. 

The article, which runs through the stages of the case and places it within the context of earlier decisions, observes that the highest German court, in reaching its decision, also took into account the decisions in parallel proceedings before the British courts and before the European Patent Office's Technical Boards of Appeal.  This serves as a reminder that, despite the considerable legal and procedural differences that still exist between jurisdictions around Europe, the substantive norms of patent law are shared and consistency between them in patent practice is an aim to which most courts now consciously aspire.