[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] 　　This case relates to an infringement action of a European patent in force in Spain, The defendant filed a counterclaim in the proceedings, And filed an objection to a disputed European patent with the European Patent Office.

　　In objection proceedings, The European Patent Office has ruled in favour of a patent amendment submitted by the objecting patentee. The ruling was then appealed to the European Patent Office's Appeal Board, It is still under review. At the same time, An infringement action brought in Spain by the European patentee on the basis of the Spanish patent in force, It is also in the appeals process.

　　Considering the circumstances of the case——The European Patent Office is likely to make a final ruling soon, And it could lead to the loss of the basis for Spain's case, Therefore, The appellant petitioned the Court of Appeal to stay the appeal proceedings, Waiting for the European Patent Office's final verdict.

　　The court ruled in favour of a request to stay the proceedings, Decided to await the administrative decision of the Appellate Board of the European Patent Office on the appeal against the conclusion of the ruling made by the Division of Objections concerning the disputed European Patent invalidation claim.

　　 [conclusion]

　　The court ruled that, The relevant law to settle the dispute in the case—— "Spanish code of civil procedure" The first 42 article, In its literal sense, When there is an administrative proceeding parallel to a pending judicial proceeding, There seems to be a preference not to suspend judicial proceedings.

　　however, The court stated that, There is ambiguity in the literal expression of the above law, The court is therefore allowed to accept the case on its merits, Discretion whether to consider other areas of jurisdiction being dealt with, A dispute relating to a case at trial ( "Spanish code of civil procedure" The first 42 article 1 paragraph) , At the same time, The choice of a stay of proceedings also appears to rest with the parties ( "Spanish code of civil procedure" The first 42 article 3 paragraph) .

　　The court held that, since "Spanish code of civil procedure" The first 42 article 1 Provision of paragraph, It is not necessary for a civil court to be aware that the conclusion of an ongoing administrative decision may have adverse consequences for the trial proceedings before it, That is to suspend the proceedings; so, Reverse inference, The court may also decide to suspend its proceedings in consideration of the above adverse effects. Therefore, if (court) The right to choose not to suspend trial proceedings, That means the right to do the opposite——Suspension of proceedings. 　　So, It is at the discretion of the receiving court based on the specific circumstances of each case, Decide whether there is an administrative dispute proceeding, And suspend the proceeding of the case.

　　Based on the above analysis, The ruling states that, Decision of the Appeal Board of the European Patent Office on the validity of the European Patent in question, And thus may cause the underlying patent in dispute to remain valid/Be revoked/Be modified, The outcome will affect the conclusion of the case. In addition, These conclusions cannot be appealed either to the European Patent Office or to the courts of member states, It's final.

　　Therefore, The court finds that the circumstances of this case are exceptional, Sufficient cause to suspend the proceedings.

　　First of all, 2018 years 10 month 19 day, The objections Division of the European Patent Office ruled against the original patent for lack of novelty, Approved the amendment plan submitted by the patentee, It has direct influence on the judicial procedure of the same subject.

　　secondly, European Patent Office Appeals Board, It is understood that there are parallel state proceedings for infringement and invalidation of the patent right, The relationship between the two parallel programs is well understood, It has been decided to expedite the review process, And promised to make an administrative decision by the end of the year.

　　In light of all of the above, Final decision of the court, There are sufficient grounds to grant the request for a stay of proceedings on appeal, Waiting for the final administrative decision of the Appellate Board of the European Patent Office on the request for administrative appeal against the cancellation decision of the Department of Objections.

　　 [comment]

　　Within the same year, Two Spanish courts——Madrid court of appeal (Ecomadrifso, S. L. case, It relates to the parallel problem of the invalidation procedure of the European Patent Office and the invalidation procedure of the patent valid in Spain for the European patent) And the Barcelona Court of Appeal (Court of the case) ——How to deal with the issue of procedural suspension when the objection procedure of the European Patent Office is parallel to the national procedure, Draw the exact opposite conclusion.

　　The Madrid Court of Appeal ruled against suspending the proceedings, It is based on a strict interpretation of the Spanish rules governing parallel procedures. The Barcelona court ruled to suspend the proceedings, Is to the same legal provisions in accordance with the unwritten principle of procedural logic after interpretation.

　　There still seems to be a groundless fear in Spain, It is time to abandon this mentality and exercise full judicial discretion. Certain disputes, Especially in the patent area, It can only be up to the courts to exercise open-mindedness through their discretion, Take full account of the circumstances of the case, Can be fundamentally solved.

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