A Spanish patents court rules for the first time on the sometimes blurry line dividing “discoveries” and “inventions”. The Court found that a method for prenatal diagnosis based on the discovery that sufficient fetal DNA can also be detected in maternal serum or plasma is a non-patentable discovery, because it lacks any “additional technical teaching” beyond that discovery. Interestingly, the High Court of Justice of England and Wales has reached the exact opposite decision in respect of the same patent.
Case date: 12 September 2017
Case number: AJM B 75/2017
Court: Commercial Court of Barcelona
A full summary of this case has been published on Kluwer IP Law.
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In my view the Court is mixing the concepts of novelty and industrial application with the definition of invention in the context of patentability. This is clear from 7.10, where it is stated that the patent is “a group of claims to known methods for detecting fetal DNA in the mother’s serum or plasma in an attempt to monopolize a discovery, with the risk of preventing its practical applications”, and the subsequent reliance on expert evidence that the claimed techniques were known at the priority date. If that is what it is, then the patent covers patentable subject matter (an artificial method for detecting information from an artificially taken sample) that has been anticipated. That is incidentally what the UK Court held: not a discovery as such, but not entitled to its priority date and therefore anticipated.
However, the most surprising aspect of this judgment is that the Court seemed to rely on one of the experts’ views on whether the patent covered or not a discovery as such (with the added weight that it was the patentee’s expert). That is not an issue of fact though, it is a point of law that is entirely within the remit of the Court to decide and, as one of the applicant’s questions noted, the expert’s personal opinion on matters of patentability is completely irrelevant.