[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.

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　　Brunoplast Di Eleuteri Bruno (Hereinafter referred to as "Brunoplast" ) Sue Plásticos de Jijona Complet, S. L. U. (Hereinafter referred to as "Plásticos de Jijona" ) and Wurth Espa? a, S. A. (Hereinafter referred to as "Wurth" ) Infringement of its European patent's exclusive right to a patent in force in Spain, The patent relates to a device for laying and cutting floor tiles. Plásticos de Jijona File a counterclaim, It is considered that people skilled in the field can build on the closest existing technology, Simply combine the technical information disclosed by other prior art, Solve the technical problem of laying floor tiles at minimum intervals, So the patent in question lacks creativity, To invalidate the patent in question. Brunoplast It insists that its patents are creative.

　　The court of first instance dismissed the defendant's counterclaim (To invalidate the patent in question) , Found that the available evidence was insufficient to prove that the patent in question lacked creativity, Whereas the device sold by the defendant falls within the scope of the plaintiff's patent, The judgment therefore upheld the plaintiff's claim. The Court of first instance noted, There is a technical difference between the claimant's patent independence claim and the nearest prior art, As a result, the solutions provided by related devices are different. The court also ruled out the possibility that combining the nearest prior art with other publicly available prior art could undermine the creativity of the patent in question, It is held that the prior Art specification does not contain a technical effect that would enable a person skilled in the field to apply to the device in an obvious manner and obtain a demonstration of the patent claims. similarly, The court rejected the defendants' request for a comprehensive review of the prior art of citation disclosure, And that the patent in question lacked creative claims.

　　Plásticos de Jijona Not accept the judgment of first instance, appeal, It holds that when the court of first instance evaluates the creativity of the patent involved, Not limited to patent features, It takes into account the preamble part of the claim, Violated the principles established by the Barcelona Court of Appeal regarding the determination of the scope of valid protection of a patent (In principle, Only the characteristic part of the claim) , Exist error.

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　　The Court of appeal decided in favour of the appellant's grounds of appeal, Determine that the technical personnel in the field are able to recognize the technical problem that the patent in question seeks to solve, And it is easy to think of the solution proposed by the involved patent to solve the above technical problems. The Court of Appeal gave the reasons for its decision:

　　- Invent effective protection range (Part of the claim characteristics) With the theme of invention protection, There are important differences;

　　- The actual scope of the patents in question is not entirely clear, For the protection range, The court can only make vague rather than clear-cut judgments;

　　- The distinction between the independent claims of the patent in question identified in the first instance and the nearest prior art, It's more about terminology, Not a conceptual difference. The Court of second instance noted, Censorship creativity, There is no need to consider the distinction of not contributing to the technical effect or result of the invention. Therefore, From the technical problem to be solved is "The ability to arrange floor tiles as closely together as possible" Look at it this way, Any distinction irrelevant to the question is irrelevant, That is, in examining the creativity of the relevant patents, It's a secondary consideration.

　　Based on the above analysis, The Court of appeal decided in favour of the appellant's grounds of appeal, The plaintiff's patent of first instance was declared invalid, And dismiss all the plaintiff's claims.

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　　Statement of judgment, Special attention should be paid to the drafting of the characteristic parts of the patent, Because that's really what determines the ultimate scope of protection for the subject matter. The appellate court also reminds us, Include all other contents of the preamble section except the patent features section, Are within the scope of prior art at the date of application.

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