[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]

　　Spain Ecomadrifso, S. L. The company filed an invalidation action against a valid patent of a European patent in Spain, The patent lacks novelty, creativity, Singularity of invention, And inadequate disclosure, Request that it be declared invalid.

　　At the same time, The plaintiff and third parties outside the proceedings, The European patent has also been challenged to the European Patent Office. In the pretrial hearing of the first instance, The parties petitioned the court to suspend the proceedings, Wait for the conclusion of the objection procedure of the European Commission before proceeding. The court reviewed and dismissed the application.

　　Before the trial of the lawsuit, The Office's objections division found that the European patent in question lacked the uniqueness of invention, Order that the patent be revoked. The patentee disagrees with the ruling, appeal. The revocation decision and the appeal against the decision by the dissenting Division took place during the Spanish patent invalidation proceedings. In the above context, The court of first instance still ruled against the plaintiff's invalid claim.

　　The plaintiff refused to accept the judgment of first instance, Lodge an appeal, Emphasising the fact that the dissenting section of the European Office has already made a ruling to revoke the European patent (Although the ruling has been appealed) . After the Court of Appeal, The Spanish patent was declared invalid.

　　 [conclusion]

　　The appeals court is in the process, It takes into account the fact that the same patent is in objection proceedings in the European Commission.

　　Judgment point, basis "European patent convention" The first 138 Provision of article, Even if the Office's objections Division or the Appeals Board ultimately rules to uphold the disputed European patent, The court of the Contracting State still has the power to invalidate the European patent in force in that country. On the contrary, If the Objections Division of the European Office or the Appeal Board decides to revoke the disputed European patent, The court of the Contracting State shall not reinstate or maintain the validity of the European patent in that State.

　　This rule leads to, Where the same patent is invalidated by both the European Commission and the court of a contracting State, Conflicting conclusions may arise.

　　For what may come up, After the court of the Contracting State has issued a judgment upholding the validity of the valid patent in its country, The European Commission subsequently concluded that the European patent was invalid, "European patent convention" No preventive mechanism is provided. Occurrence of the above situation, "European Patent Office Review Guide" Merely stipulate, If the court of a contracting State is hearing a dispute of infringement, (European commission) Court notices may be applied for or received on the party's behalf, Expedited dissent and appeal process.

　　The judgment in this case states, Similar dispute, The judiciary of each State party has a different approach. Some State laws require the suspension of national proceedings; Others provide that the court of hearing has discretion, Judge whether to suspend the hearing procedure according to the specific circumstances; And a few more, It requires that the European patent challenge period expire, Or the relevant objection procedure of the European Commission has been terminated, To initiate proceedings in the courts of the Contracting State.

　　The admissibility court went on to note, Spanish law does not explicitly address this situation. Therefore, In principle, When there is a parallel program like this one, Only the parties to an action agree to file an application, In order to suspend relevant proceedings.

　　In addition, The judgment also states, "European patent convention" The first 106. 1 Article provision: "Reception office, Examination department, The decision of the dissent Division and the legal Division, May appeal. An appeal has the effect of suspension" . The second sentence should be read as, The conclusion of the appeal is pending completion of the appeal process, Its legal effect is suspended (Appeal Board of the European Commission 1994 years 12 month 7 Day control J 28/94 adjudication; 1997 years 2 month 28 Day control J 3/95 adjudication) .

　　Based on the above considerations, The court of hearing held that, unless (European commission) The Division's decision to revoke the patent was eventually reversed through the appeals process, The decision will not impede the process of assessing the invalidation of the Spanish patent, Nor will it be decisive for the court's invalidation, Its value is only to provide more evidential facts for the invalidation.

　　 [comment]

　　The proceedings of the States parties shall run parallel with the objection proceedings of the European Commission, Has created a lot of procedural uncertainty. In principle, Neither Spanish nor European law provides that the court should suspend conflict proceedings. Only the parties to the lawsuit agree, Joint request, The court will suspend the proceedings. This situation is contrary to the general principles of law, Lack of canonical support for program logic. Under similar circumstances, If the European patent has been revoked by the Objections Division of the European Commission, Whether it is necessary to continue the proceedings?

　　What's surprising is that, On this issue, The Madrid appeals court and the Barcelona appeals Court also seem to have different opinions (Please refer to our previous review article " [European patent] The parallel problem of litigation procedure and administrative procedure of Patent Office (ECLI: ES: APB: 2019: 7520A) " ) .

　　 [reference]

　　 " [European patent] The parallel problem of litigation procedure and administrative procedure of Patent Office (ECLI: ES: APB: 2019: 7520A) "

　　compile: Liu Dan, Esabarry Legal Counsel

　　source: Esabaril (ELZABURU) Intellectual property rights