[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]

　　Laboratorios Liconsa, S. A. company (Hereinafter referred to as Liconsa) File an action for patent invalidation, Petition for proclamation Boehringer Ingelheim Pharma GmbH & Amp, Co. KG company (Hereinafter referred to as Boehringer) A European patent was invalidated in Spain. The patent relates to certain capsule materials that have reduced moisture content "Inhalation capsule" , Contains the active substance tiotropium in powder preparation form (tiotropium) , co-ownership 16 claim. Liconsa claim, The patent in question lacks novelty, creativity, Should be declared void. Time of defense, Boehringer Apply for "European patent convention" The first 138. 3 article, Amendment of a claim to a disputed patent, In the form of counterclaim, the application for limitation of claims was submitted, Will Hara 16 The claim is reduced to 10 item. Liconsa In response to the counterclaim, The application had several procedural flaws, And the restricted claims remain uncreative, Be deemed invalid. It further points out that the claims are unclear, And introduces a new theme.

　　The court of first instance agreed with most of the plaintiff's claims after review, The amendment made by the patentee to the patent claim in dispute is ruled invalid. The judgment stated, An amended one filed in counterclaim proceedings 10 claim, New themes are introduced, nullification. Although the court recognized the original petition (Claims and descriptions) Contains a set of characteristics mentioned in the revised independent claim, However, the combination of these technical features is considered arbitrary, And the technical personnel in this field can not get any inspiration from the original application, Decide on the final selection of these features, Rather than any other characteristic. The court also concluded, this 10 Neither claim is creative.

　　Boehringer Not accept the judgment of first instance, appeal. Except for the procedural defects mentioned in the counterclaim procedure of first instance, appellee Liconsa It also questioned the conclusion of the first instance judgment that the disputed patent was invalid, Because from his point of view, The patent should be adjudicated directly.

　　In the process of appeal, Boehringer File a motion, Inform the court of Appeal that it has complied "Spanish patent law" The first 105 article, An application was filed with the Spanish Patent and Trademark Office, Modify to restrict its patent rights. and, Before the Court of Appeal gives its decision on appeal, The Spanish Patent and Trademark Office has approved the application, And the revised text will be published in the Industrial Property Bulletin. Boehringer Think that, The date the text of the new patent is published, The original patent is automatically invalid. Therefore according to "Spanish code of civil procedure" The first 22 article, The basis of the dispute shall be lost, Terminate the current proceedings. however, The appellate court denied a motion to dismiss the lawsuit, Due to Boehringer Do not depend on "Spanish patent law" The first 105 Provision of article, Request court approval, Therefore, the revised text of the new patent should not be considered, The limitation of patent made by the right holder has no effect. Therefore, The appeals court decided not to consider the text of the patent published in the Industrial Property Bulletin of the Spanish Patent and Trademark Office, Adjudicate the following disputes on appeal:

　　- If grant the request to limit the patent, Meet all legal requirements, This restriction will be allowed, The court will require that the amended text be registered in the record of ongoing legal proceedings;

　　- If you don't agree to a request to limit the patent, The court will decide to revoke the original patent, An amended version subsequently submitted and published to the Spanish Patent and Trademark Office, Simultaneous cancellation.

　　 [conclusion]

　　At issue on appeal is: Whether the amended claim introduces a new subject?

　　The appellate court largely concurred with the evidence identified in the first judgment and the conclusions reached therefrom. The Court of Appeal noted, This is despite the fact that all elements and features of the amended patent already appear in the specification or claim of the original patent, Modify a particular combination of features in the text that are selected from a different list, Insufficient indication can be obtained from the original patent text, Be able to draw "This particular combination is unequivocally derived from the original patent" Conclusion of. The court held that, There is no enlightenment for those skilled in this field, It can be inferred that the combination of features contained in the amended patent has been directly and explicitly disclosed in the original patent. The court concluded that, New subjects have been added to the two independent claims and to all subordinate claims. In addition, In order to comprehensively analyze (First instance) All grounds of invalidity of plaintiff's claim, The court then analyzed the creativity of the modified patent, And finally decided that there was a lack of creativity.

　　Finally, On the validity of the modified patent, The court rejected Liconca A challenge to the judgment of the first instance, identification, Limiting the rights of a patent does not necessarily imply tacit acceptance of the prosecution's invalid grounds in any case, In particular, the defendants did not agree to the charges, It's the circumstances of the counterclaim. The court stated that, Although modifying a patent does mean giving up the original patent, But this is just a defence against invalid claims, It's a stopgap measure to prevent the patent from being invalidated.

　　 [comment]

　　The verdict in this case is complex, Involving a number of procedural and substantive disputes of different types and of varying importance. Need special attention, Court of justice "Patent law" The first 105 Bar consideration, And when modifying the patent in accordance with that section, They need to obtain permission from the court handling invalid lawsuits, To ensure the necessary coordination between the judicial proceedings of invalid proceedings and the administrative proceedings of the Spanish Patent and Trademark Office.

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