In February, the Supreme Court ruled in favour of the Provincial Court of Granada, confirming the nullity of the Erasmus University of Rotterdam patent for a lack of inventive step.
The High Court upheld the judgment of the provincial court, which had dismissed the university’s appeal, for lack of inventive step, deficiencies in the description and for procedural flaws, effectively annulling this patent regarding a method for detecting lymphomas.
The court also takes the opportunity to rule on the requirements for patentability. The Supreme Court recalls that it is the description of the patent which must contain and set out the objective technical problem. In this regard, the Court points out that the description did not claim the technique for diagnosing genetical alterations which made it possible to detect lymphomas (PCR).
The European Patent Convention (EPC) and the Spanish Patent Act of 1986 (PA) establish that the invention must be new, it must be novel, have inventive step or innovation and be industrially applicable, in the requirements for patentability.
In the same way, both regulatory texts provide that the invention shall be considered to involve an inventive step if the state of the art of the invention is not obvious to a person skilled in the same field. This is the so-called would-could test.
To perform the test, the closest and most relevant state of the art must be identified. Next, the problem to which the patent application offers a solution is assessed. This is to determine whether the proposed solution would be obvious to a person expert in the field. If it is decided that the expert would have reached the same conclusion, the invention is not patentable.
In practice, the performance of this test poses a problem, since the solution provided by the patent can alter and influence the assessment of the expert. This was precisely one of the appellant’s arguments, who claimed that the expert took into account the solution provided by the invention itself when determining obviousness.
Hence, in relation to this last issue, the Supreme Court ruled that, for the expert’s assessment, it is possible to combine the state of the art closest to the invention with documentation and information prior to the patent in order to determine the obviousness of the invention.
Thus, the High Court states that “It is reasonable for [the expert] to refer to documents prior to the patent application, which also formed part of the state of the art, in order to assess the extent to which the average skilled person would know the invention”.
In summary, the Supreme Court states that, although the influence that the patent solution may have in judging the obviousness of the invention must be taken into account, prior state of the art and documentation may be considered by the expert in reaching their conclusion.
Therefore, in the case in question, the Supreme Court considered that the technique used was obviously known and therefore lacked inventiveness, which is why it ratified the ruling of the Granada Provincial Court and the annulment of the patent.
Aleix Cuadrado
Vilá Abogados
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1st April 2022
