A judgment of 13 July 2017 from the Spanish Supreme Court (Civil Chamber) has highlighted the importance of taking the fine pencil when examining novelty.
The decision stemmed from a judgment of 12 September 2014 from the Barcelona Court of Appeal (Section 15), which had declared patent ES 2.344.241 invalid due to lack of novelty. The patent owner filed an appeal against this judgment before the Supreme Court, alleging, among other arguments, that the Court of Appeal had combined two documents of the prior art to reach the conclusion that all the elements of the claim were anticipated in the prior art. In particular, it alleged that the lower Court had taken some elements from document 1 and other elements from document 2. Also, the patent owner contended that the Court of Appeal had examined the novelty of the product, whereas the claims protected a specific use of such product.
In its judgment of 13 July 2017, the Supreme Court agreed with the appealing party that the lower Court had applied an incorrect methodology when examining novelty, because it had taken some elements from document 1 and other documents from document 2. In particular, it reproached the lower Court for having allegedly considered that the relevant point was whether all elements of the claim were anticipated by the prior art (no matter if some elements were disclosed in one document and the rest of the elements in another document), whereas the correct test for novelty requires all elements of the claim to be disclosed in one single piece of the prior art. Notwithstanding all of this, in the end the Supreme Court upheld the judgment, as it considered that the specific use claimed was allegedly disclosed in one single document of the prior art.
All in all, this recent judgment has further highlighted the importance of using a fine pencil when examining novelty.
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What the Supreme Court actually did, is to actually follow the practice of the EPO and its Boards of Appeal.
No mosaic of documents when it comes to novelty, with however the exception of a direct reference to a specific passage of a referenced document.
Whether the features are in one or two documents is as such not much different:
the content of an application as filed must not be considered to be a reservoir from which individual features pertaining to separate sections/embodiments can be combined in order artificially to create a particular combination/embodiment.
No mosaic either inside one and the same document!