[Editor's note] Like most countries and regions in the world, The rulings of the Court of Justice of the European Union have important guiding significance and predictive value for understanding the legal norms of the European Union. Esabaril (ELZABURU) At the beginning of each year, typical cases of the Court of Justice of the European Union in the previous year are summarized and published, And a brief review of each case, In order to help customers and partners to understand the EU intellectual property norms. Given the importance of Chinese customers and partners, We try to publish the Chinese version of typical cases on a weekly basis, It is convenient for Chinese partners to learn the latest information in a timely manner.

　　 [background]

　　Aristo Pharma Iberia, S. L. company (Hereinafter referred to as "Aristo Pharma" ) right Simbec Ibérica, S. L. (Hereinafter referred to as "Simbec" ) A European patent "Ebastine solid oral medication" Initiating an invalid application for a valid patent in Spain. The applicant considers that, The patents in question are not fully disclosed, Lack of creativity and novelty. Barcelonetti 4 The commercial court dismissed the invalid application, Adjudicating disputed patents is not obvious, And the patent specification has been fully disclosed. Aristo Pharma Not accept the judgment of first instance, Appeal to the Court of Appeal.

　　 [conclusion]

　　After the Court of Appeal, rejected Aristo Pharma Application for appeal. The reasons for the judgment are as follows:

　　- First of all, The appellant argues that the first judgment failed to adequately explain the reasons for the decision, The scope of protection of independent claims in disputed patents is unclear, And inadequate instructions. For the last two questions, The court of appeal held that, The content of the independent claim of the disputed patent is clear, What cannot be claimed to be protected by this claim alone is a certain range, That the description of the claim is not clear.

　　- secondly, The appellant argues that the independent claim of the disputed patent should be recognized as a method claim, Rather than the product claims decided by the court of first instance. The court of appeal held that, This is despite the fact that the specification section of the independent claim mentions the method of producing the patented product, As well as the required temperature conditions when each component is mixed, But separate claims as a whole, It is undoubtedly a product invention, Not a method invention.

　　- again, The appellant argues that the patent in question lacks creativity, It filed an invalid application citing the Korean patent earlier than Simbec Patent in dispute, Therefore, the latter does not have the creativity required for patent protection. The appeals court rejected the claim, identification: (1) The technical issues addressed by the disputed patents do not exactly overlap with the previous Korean patents; (2) The composition covered by the prior Korean patent includes an adsorbent, The patent at issue does not cover this technical feature; (3) Two technical characteristics of independent claims in disputed patents (Ebastine and surfactant) It does not appear in the Korean patent; and, (4) In the first instance, The invalid applicant failed to demonstrate that the two technical features of the disputed patent were obvious.

　　In short, Appellate decision, There are fundamental structural differences between the disputed patents and the previous Korean patents, Therefore, Technology disclosed in accordance with the prior patent, It does not undermine the creativity of the patent's independent claims in this case. It's worth paying special attention to, When the appellate court reviews the grounds of appeal, Challenge the expert opinion submitted by the invalid applicant, It was considered that the opinion focused primarily on abstract questions which were essentially legal; By comparison, The expert opinion submitted by the respondent analyzes the case disputes from a technical point of view, Provide pharmacological data to help better understand the role of the components in the composition, And utility and so forth, More helpful for the court to find out the facts of the case.

　　 [comment]

　　The verdict has not been challenged. When a party submits an expert opinion in support of his claim, Special attention should be paid to, The technical content of expert opinion plays an important role in invalid dispute trial involving patent lack of creativity, The relevant problems should be analyzed from the technical point of view, Not a legal perspective.

　　compile: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights