The amendment before the EPO of a patent subject to ongoing litigation

gener 2021

On October 16, 2020, the Provincial Court of Barcelona issued a ruling that we consider very interesting and which provides an answer to the question of what should happen in an ongoing dispute over a patent, when it is amended at the European Patent Office.

Indeed, once the grant of a European patent is published in the European Patent Bulletin, it can be validated in Spain. With this validation, the patent holder can oppose it to third parties in Spain. However, the European patent that is validated in Spain can still be objected to by third parties in the European Patent Office. In the context of this opposition, the patent may be limited. This requires that the patent validated in Spain also be modified by submitting the corresponding translation to the Spanish Patent and Trademark Office.

This is what happened in the case resolved by the referenced resolution. Corning Opticals filed a patent infringement lawsuit against Huawei based on a Spanish patent. Huwaei answered the claim rejecting the infringement and filed a counterclaim requesting the invalidity of the Spanish patent. In parallel, Huwaei filed an opposition with the EPO against the European patent which served as the basis for the Spanish patent.

In the first instance, the Court considered that the patent was valid and that it had been infringed. The resolution was appealed in front of the High Court of Barcelona. At the same time, the opposition procedure before the EPO continued and ended up involving the limitation of the European patent in front of the EPO.

Therefore, the Spanish patent that was being considered in the appeal was limited as a consequence of the opposition process at the EPO. Corning Opticals submitted an amendment to the OEPM, with its corresponding Spanish translation. However, Huwaei requested that the nullity claim be terminated due to a supervening lack of purpose and that it be declared that there was no infringement of the patent.

Two interesting questions were raised before the High Court: The first, whether the limitation of the patent has retroactive effects or not (ex tunc or ex nunc). The second, if the procedure should continue, end or restart

In relation to the first question, the High Court considered that it has retroactive effects: the effects of the limitation go back to the moment of initial granting of the patent (provided that it complies with the corresponding legal limits; that it is not amended in such a way that its object exceeds the content of the application as it was filed initially and that this amendment does not entail an extension of the protection conferred by the patent). This is expressly indicated in article 43.5 of the Patent Law.

In relation to the second, the Court decided to continue the procedure.

Article 120.4 of the Patent Law establishes that “[…] when due to supervening circumstances the patent is amended outside the procedure, the owner of the same may request that the patent thus amended serves as the basis for the process. In these cases, the Judge or Court must grant the possibility to file allegations to the parties”. This article offers a solution similar to that offered by articles 286 of the Civil Procedure Law, regarding new facts, and article 460.2.3 of the LEC, regarding to evidence in an appeal stage.

The problem, in this case, is that the judicial procedure was precisely at the appeal level. In it, the options to provide new evidence are limited. The Provincial Court considers the following: “It is true that, as a consequence of the limitation, it is possible that the defendant has lost the opportunity to allege some causes of nullity, which the modification has enervated. But this does not limit their right of defense, since the modification or limitation is intended to avoid objections of this type in order to maintain the validity of the modified patent, without expanding the scope of protection. The important thing is that the parties have the procedural opportunity to allege and prove said arguments about the validity of the modified title, for which we will use the procedures provided in the aforementioned articles of the LEC”.

Those articles to which the sentence refers are 286 of the LEC and 460.2.3. of the LEC. The first of them allows that, if there are new facts, allegations can be provided and evidence carried out. The second allows that at the appeal stage evidence is carried out on facts of relevance to the decision of the lawsuit, which occurred after the beginning of the term to issue the resolution in the first instance.

Based on these articles, the Court summoned the parties to allege whatever they considered appropriate and, we imagine, performed the relevant evidence (it is not public yet). It is an option authorized in the aforementioned articles and that, in principle, seems more suitable to the principle of procedural economy than to terminate the procedure or send it to the first instance. However, it is an option that is not risk-free at all and must be analyzed carefully in each case. In a patent litigation, proof is essential. For instance, what the experts conclude on whether the controversial products reproduce the elements of one or more claims is essential. The same with the analysis of the novelty or inventive step of a patent. Usually other key arguments – such as insufficiency of description – need to be carefully scrutinized. And the opinion and knowledge provided by the experts is crucial and necessary for the judges (who do not have a technical background) to understand the technical problems at stake.

A modified patent must be reviewed very carefully. Even considering that an amendment cannot exceed the scope of protection of the patent as it was requested. What happens if elements of a claim have been removed? Without these elements, does the patent still involve inventiveness? These are fundamental questions for a patent procedure and evidence as exhaustive as in the first instance should be carried out on them. Not to mention that the resolution issued in the second instance may no longer be appealed except before the Supreme Court, for which there are limited grounds. Therefore, it is a solution that may be “economical” but is not exempt of risks. We will have to wait and see how they are solved in our courts. For now, the option of the High Court of Barcelona is to continue with the procedure, even if it is in appeal stage.