Spain: Supreme Court of Spain, Third Contentious-Administrative Law Chamber, 434/2013, 12 June 2013
October 26, 2017
In a Judgment dated 12 June 2013, the Spanish Supreme Court confirmed that it was possible to discriminate between different objective technical problems within the same set of claims. Accordingly, an independent claim may be found to be obvious, and yet one of its dependent claims could still be deemed valid, provided that it claimed an additional feature providing a non-obvious solution to another, distinct objective problem. The Supreme Court also found that, when assessing inventive step, it is necessary to take into account the teachings of the patent specification, although they are not part of the prior art.
A full summary of this case has been published on Kluwer IP Law.
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Attentive observer
What seems a big deal at the Supreme Court of Spain is a classic way of looking at things at the EPO. That with different differences, sorry for the pun, there is a different objective problem, should not come to a surprise for people acquainted with the problem-solution-approach. There are numerous opposition examination papers at the European Qualification Examination (Paper C) which play around the theme. There even have been cases, in which for each different dependent claim, there was even a different closest prior art. See for instance C 2012, claims 2, 3 and 4. Does this mean that the problem-solution-approach, as practised as the EPO has been adopted by the Spanish Supreme Court, and hence by all Spanish courts?
Attentive observer
Why was my comment not published? Was it embarrassing or wrong to state that the Spanish Supreme court is actually following the practice of the Boards of Appeal of the EPO? For me it was a matter of fact, not an opinion. Even if it had been an opinion, I think that a blog like the present one should be a forum of discussion were different opinions can be expressed.