Sunday, 11 March 2012

Non-Spanish language prior art in Spain

Spain says "hello" to non-
Spanish language online prior art
PatLit's thanks go to Ignacio Marqués Jarque (Abogado, IP/IT Department Baker & McKenzie Barcelona, S.L.P.) for news that a still-recent and now final decision of the Court of Appeals of Madrid redefines the concept of "national divulgation" in Spanish utility model cancellation actions in accordance with the current availability of online patent databases, regardless of the language in which the prior art is divulged. He explains:
According to section 143 of the Spanish Patent Act of 11/1986, of 20 March, a registered Spanish utility model protects inventions of "less inventive status" than those protected by patents. When granted, it protects a product's specific set-up or structure from which some use or practical/technical advantage can be obtained (its aim is to protect "utility" and "practicality" in a product's manufacture or use). A Spanish utility model is protected for a period of ten years from filing, and according to Spanish law, requires "Spanish novelty" as the relevant state of the art is "everything divulged in Spain before the application date" (section 145 of the Spanish Patent Act). 
In recent years, there has been a lot of contention and debate on the concept of "national divulgation" involving Spanish utility models litigation, and how this "national state of the art" is to be construed. In its judgment, no. 330/2011, the Audiencia Provincial de Madrid - Sección 28ª (the Court of Appeals of Madrid, 28th Section) has established that online patent databases can be used as evidence of prior art for the purpose of cancelling Spanish utility models ("modelos de utilidad"), even when such prior art is divulged in languages other than Spanish. 
In the reported case, the claimants relied basically on foreign patents to show and declare that the challenged Spanish utility models were not novel and did not meet the required level of inventive step. The Court understood that the prior art brought to the case was "divulged in Spain" (as the law requires) as it was available in online free-of-charge patent databases such as the European Patent Office's Espacenet before the challenged Spanish utility models were filed. The Court found that the prior art resulting of those online databases was relevant to determine the invalidity of the later Spanish registrations. 
This case is of relevance as the reported jJudgment redefines (and updates) the concept of "divulgation" in Spanish utility models cancellation actions with regard to (i) the legal relevance of foreign registrations and (ii) the availability of new sources of patent information (i.e. online databases)".


Francisco said...

This was very much needed, but I guess that we'll have to wait until something like this case reaches the Spanish Supreme Court (until now the sentences have been contradictory).

By the way, have you got the judgement in PDF? I've tried in a pair of case law databases without success.


Anonymous said...

The problem here is the interpretation of the expression "made available in Spain" of the Spanish Law. Can a document in a foreign language be considerd as "made available in Spain"?

If the Spanish Supreme Court does not accept Catalan language, that is official language in a part of Spain, I have my doubts that would accept a language different than Spanish and give it a level (in the terms of knowledge) as Spanish.

Courts insist on obligate to translate everything that is in a foreign language, in order to avoid the lack of proper defense. A person could argue that is not obligated to know a foreign language.

The solution is easy, a change in the law, to amend "national novelty" by "world novelty".