12.4.1 Grounds for invalidation
12.4.1.1 The requirements for patentability
The first ground for invalidation is failure to meet any of the requirements for patentability. According to Article 4 of LP-2015 “Inventions that are novel, that involve an inventive step and that are capable of industrial application are patentable in all fields of technology.” Thus, the requirements of patentability are novelty, inventive step and industrial applicability.
Article 5 of LP-2015 also provides for exceptions to patentability, such that a patent can also be impugned, and its subject matter considered unpatentable, for falling under those exceptions.
Patents are most frequently challenged, however, for lacking novelty or an inventive step.
12.4.1.1.1 Novelty
Article 6 of LP-2015, in terms similar to those of Article 54 of the EPC, reads as follows:
An invention shall be considered to be new if it does not form part of the state of the art.
State of the art is defined in Article 6(2) as:
everything made available to the public, in Spain or abroad, by means of a written or oral description, by use, or by any other way, before the date of filing of the patent application.
Article 6(3) goes on to specify the following:
Additionally, the content of Spanish patent or utility model applications, of European patent applications designating Spain, and of international PCT patent applications that have entered the national phase in Spain, as filed, with an earlier filing date than that indicated in the preceding subparagraph and published in Spanish on or after that date, shall be considered as comprised in the state of the art.
The relevant date will be the submission date of the application, unless priority has been claimed for “an original application for a patent, a utility model or a utility certificate in or for any of the States parties to the Paris Convention for the Protection of Industrial Property, done in Paris on March 20, 1883, or of the Agreement establishing the World Trade Organization,” if filed within the previous 12 months. “As a result of the exercise of the right of priority, for the purposes of the provisions set out in Sections 6, 10(3) and 139, the filing date of the patent application shall be deemed to be the filing date of the earlier application whose priority has been rightfully claimed.”17
Assessing the novelty of a patent means comparing each patent claim, interpreted according to the description and drawings provided, against a single state-of-the-art disclosure (document).
A claim is considered to lack novelty when a document or other form of state-of-the-art disclosure, directly and unambiguously (that is, undoubtedly) anticipates each and every element of the claim at issue.
In practice, national courts apply the criteria set out in the Case Law of the EPO Boards of Appeal, summarized in the method described in the Guidelines for Examination and in the Spanish Patent Office Guidelines. The method for assessing novelty consists of three steps:
- 1. identify the technical elements of the invention claimed, with reference to the expert opinions provided by the parties, for comparison with one or more state-of-the-art documents;
- 2. determine whether the document cited by the party challenging the patent forms part of the state of the art; and
- 3. assess whether, at the time of its publication, the document said to anticipate the challenged claim explicitly or implicitly disclosed all of that claim’s elements or steps for a person skilled in the art.
In making this last comparison, the first fundamental rule in assessing novelty is not to combine disclosures from different state-of-the-art documents for comparison with the elements of the challenged claim. Doing so would misrepresent the state of the art: the novelty of the claimed invention may in fact lie in combining different state-of-the-art solutions. These comparisons must therefore be made document by document18 (anticipation by anticipation). Not even different processes covered in the same document should be combined unless that combination is suggested therein. An exception to this first rule is when a document (the main document) refers explicitly to other documents that have also been published to provide more details on a given characteristic.
The technical teachings provided in the document must be considered as a whole, as a person skilled in the art would do. Separate parts of a given document must not be taken arbitrarily out of context to extract technical information that differs from or contradicts, the document’s overall disclosure, considered as a whole. In challenging the novelty of a claim, it is acceptable to combine separate passages (teachings) from a single document, but reasons must be given for concluding that a person skilled in the art would do so.
The third step of this method, in making comparisons between prior disclosures and more recent claims, involves this concept of “a person skilled in the art”, with reference to the subject matter of an invention. This concept is generally understood to refer to the notion of a skilled practitioner in the relevant field of technology aware of what was “common general knowledge” in the art at the relevant date and of the means normally used to perform relevant routine work and experimentation in that field. The special characteristic of this archetypical skilled practitioner (or team of practitioners) is access to all the knowledge that defined the state of the art, and in particular the documents that need to be compared with the invention claimed.
Thus, differences between the invention claimed and what is disclosed in a prior document are assessed by considering what a person skilled in the art, after reading the document, would consider to have been disclosed. Logically, according to Article 335 of Law No. 1/2000 of January 7, 2000, on Civil Procedure (LEC),19 such knowledge must be brought to the court by experts witnesses. The concept of a “person skilled in the art” must not, however, be confused with such witnesses but rather be invoked by the judge, a layperson in this context, after considering the insights provided by expert witnesses to justify the comparison. The function of the expert witness is thus to assist the judge by identifying, reading and correctly assessing documents forming part of the state of the art that are being cited as the basis for challenging the novelty of a claimed invention.
The elements of a patent claim may have been disclosed by an earlier document either explicitly or implicitly.20
Express disclosures: A document which forms part of the state of the art deprives the claimed invention of novelty, if a reading thereof reveals that the claimed elements are obvious, straightforward and unambiguous to a person skilled in the art. It should be noted that the implicit characteristics of all the elements explicitly mentioned in the document are also understood to have been disclosed to the person skilled in the art. One thing that cannot be done, when assessing novelty, is to include well-known equivalents, as such document interpretation is characteristic of the analysis of inventive step.
Subject matter described in a document can only be regarded as having been made available to the public if the information given therein is sufficient to enable the skilled person, at the relevant date of the document and with the general knowledge assumed to be available at that time, to practice that technical teaching. Similarly, a chemical compound, whose name or formula is mentioned in a state-of-the-art document, is not thereby considered as known, unless the information in the document, together with knowledge generally available on the relevant date of the document, enables it to be prepared and separated or, in the case of a product of nature, only to be separated.
Implicit disclosures: The lack of novelty is considered implicit if, in carrying out the teaching of the state-of-the-art document, the skilled person would inevitably arrive at a result falling within the terms of the claim.
A general teaching or disclosure does not as a rule deprive a more specific invention of its novelty. Specific disclosures, on the other hand, do deprive more general inventions of novelty.
In the same vein, when an independent claim is novel, all of the dependent claims it incorporates by reference are also novel. Conversely, the invalidation of an independent claim for lack of novelty does not affect its dependent claims, since they incorporate features that may not be disclosed in the state of the art.21 This rule is also applicable to inventive step.
What is known as the “two-lists principle” is also important in this context. In determining the novelty of a selection of elements, it has to be decided whether the elements are disclosed individually (concretely) in what is alleged to be anticipatory. A claim consisting of a selection from a single list of previously disclosed elements must not be considered novel. But if the specific combination of features claimed must be selected from two or more lists of a certain length, then that combination not specifically disclosed in the state of the art, must be considered novel.
12.4.1.1.2 Inventive step
Article 81 of LP-2015 provides that “an invention is considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.” In determining the state of the art, however, patent applications not published before the relevant date, as referred to in Article 6(3) of LP-2015, are not taken into account.
The Supreme Court has clarified the following:
The criterion for this requisite inventive step is whether the skilled person, working from earlier (state-of-the-art) descriptions and their own knowledge, finds it obvious to obtain the same result, without applying their ingenuity, which indicates that there is no inventive step.22
In practice, Spanish courts follow the problem-solution approach adopted by the EPO Boards of Appeal to assess inventive step as well as novelty. While recognizing that other methods could be used to assess inventive step and avoid an ex post facto analysis, the Supreme Court has explicitly admitted the validity of this approach to inventive step for use in civil proceedings.23
As defined in the Guidelines for Examination in the EPO, this approach consists of three main stages:24
- 1. determining the “closest prior art”
- 2. establishing the “objective technical problem” to be solved, and
- 3. considering whether or not the claimed invention, starting from the closest prior art and the objective technical problem, would have been obvious to the skilled person.
The point bears repeating, using the Supreme Court’s succinct description of this method:
First identify the state of the closest prior art; then identify the objective technical problem to be solved; and finally, consider whether the claimed invention would have been obvious to a person skilled in the art given the closest prior art and the objective technical problem.25
12.4.1.1.2.1 The closest prior art document
The closest prior art document is that which, in one single reference, discloses the combination of features that constitutes the most promising starting point for a development leading to the invention. In selecting the closest prior art, the first consideration is that it must be directed to a similar purpose or effect as the invention, or at least belong to the same or a closely related technical field as (the technical field of) the claimed invention. In practice, the closest prior art is generally that which corresponds to a similar use and requires the minimum of structural and functional modifications to arrive at the claimed invention.
When judges hear civil invalidation proceedings, the principle of coherence obliges them to respond to an invalidation request, as argued by the party filing it, in accordance with Article 218.1 of the LEC, which provides that “The judgments must be clear, precise and coherent with the claims and with the other pleas of the parties, as deduced in due time during the proceedings.”
But unlike what happens in a patent office, where the document representing the most promising starting point is selected by the examiner, in a court it is the parties who select such documents.
What often happens is that parties propose several documents for examination. In that case, the court can meet the coherence obligation by assuming that the skilled person would reject documents if no more promising than others as starting points. The court can then analyze the starting point as argued by the parties without analyzing every document they propose, rejecting as many as the patent owner can demonstrate are not as promising as what he has proposed.
The Guidelines for Examination in the EPO26 state the following on this point:
In some cases, there are several equally valid starting points for the assessment of inventive step, e.g. if the skilled person has a choice of several workable solutions, i.e. solutions starting from different documents, which might lead to the invention. If a patent is to be granted, it may be necessary to apply the problem-solution approach to each of these starting points in turn, i.e. in respect of all these workable solutions.
But the Guidelines also qualify this statement, as follows:
However, applying the problem-solution approach from different starting points, e.g. from different state-of-the-art documents, is only required if it has been convincingly shown that these documents are equally valid springboards.27
12.4.1.1.2.2 The objective technical problem
The objective technical problem needs to be formulated by first comparing the invention with the closest prior art and then identifying the changes necessary to achieve the technical differences offered by the claimed invention. This means first identifying the differences between the prior disclosure and the claim, and then deriving the technical effect of those differences.
Once the closest prior art has been identified, the second step, taking the problem-solution approach, is to identify the objective technical problem, which means starting with the document representing the prior art closest to the claim at issue and identifying the structural and functional technical differences between what is disclosed in that document and the claim at issue. Once those distinguishing features have been identified, their technical effect is determined and used as the basis for formulating the objective technical problem.
As a general rule the objective technical problem is formulated based on the problem that the patent claim at issue, according to its description, has solved. But if the examination reveals that the problem described has not been solved, or properly framed in the prior art, then the objective technical problem solved by the patent claim must be identified.28 This situation can arise when the challenging party proposes a closest prior art document different than the one on which the patent-granting decision was based.
If the court considers that the closest prior art document or objective technical problem cannot be applied as proposed by the challenging party, the logical course is to dismiss the petition for invalidation, since what is up to the court in a civil case is merely to assess the claim’s validity based on the allegations of the parties, not to re-examine the requirements for patentability.
12.4.1.1.2.3 The obviousness test
Once the closest prior art and objective technical problem claimed to be solved by the invention have been determined, the next step is to assess whether or not the solution offered by the invention is obvious to the person skilled in the art.
This assessment entails a test referred to as the “could-would approach”. According to the Guidelines for Examination in the EPO,29 the question to be answered in this third stage is whether there is any teaching in the prior art as a whole that would (not simply could, but would) have prompted the skilled person, faced with the same objective technical problem, to modify or adapt the closest prior art while taking account of that teaching, thereby arriving at something falling within the terms of the claims and thus achieving what the invention achieves.30
The Supreme Court has stated that:
in assessing whether an invention is obvious, the skilled person does not consider documents or prior rights in an isolated manner, as must be done in assessing novelty, but rather combines them to determine whether the prior information available is sufficient to enable them to reach the same conclusions without need for the information disclosed by the inventor.31
In Judgment No. 334/2016, of May 20, 2026, however, the Supreme Court states that:
The origin of a particular combination is contingent upon an assessment of what was suggested or obvious for the average skilled person, bearing in mind that assessing obviousness often means determining what specific prior rights must be combined to show that the invention would be obvious for an average skilled person with the knowledge available as of the priority date.32
12.4.1.2 Insufficiency of the description
Article 27(1) of LP-2015 provides that “The invention shall be described in the patent application in a sufficiently clear and comprehensive manner to enable a person skilled in the art to carry it out”, failing which, per the patent is invalid.33
The Supreme Court, without calling them binding, has cited three types of considerations by the EPO Boards of Appeal in this area:
- i) First, the occasional failure of a procedure to deliver the results claimed does not affect its reproducibility if only a few attempts are necessary to turn the failure into a success, provided those attempts remain within reasonable limits and do not require an inventive step (T 931/91).
- ii) Second, reproducibility is not affected if the selection of inputs for different parameters is a routine exercise and/or if additional information is provided using examples in the description (T 107/91). In case T 764/14, the Chamber concluded that the skilled person was capable, based on common general knowledge and in the corresponding routine variation of experimental conditions, of supplementing the information contained in paragraph 0031 of the patent at issue and therefore of determining the input concerned, possibly with some uncertainty but without an undue burden [...].
- iii) And in addition, “the EPC does not require that it be possible for the claimed invention to be executed with a few additional undisclosed steps. The only essential requirement is that each of those additional steps be so obvious to the skilled person that, in the light of their common general knowledge, a detailed description of those steps would be superfluous (T 721/89).”34
In the application of this cause of invalidity,
The skilled person is the same as the one we would have to use to assess inventive step. In Judgments No. 334/2016, of May 20, 2016 and No. 532/2017, of October 2, 2017, we [the Supreme Court] clarified that “the skilled person” is a hypothetical specialist in the technical field corresponding to the invention at issue, possessed of common general knowledge in that subject matter and having access at the relevant date to related, state-of-the-art information – and in particular to the documents in the “prior art search report”. This person has more expert knowledge about the technical problem area than about any particular solution. They are not a creative, lack special ingenuity (they are not an inventor) and are influenced by prejudices common to the time in the state of the art concerned.35
12.4.1.3 The addition of subject matter
Article 102(1)(c) of LP-2015 mentions as a cause of invalidation cases where the subject matter of a patent “goes beyond the content of the patent application as filed […]”.
This cause of invalidity flows from the prohibition in Article 48(1) of LP-2015, similar to that contained in Article 123 of the EPC, which establishes the following general rule:
With the exception of those cases involving rectification of obvious errors, the applicant may amend the claims in their application at any stage of the grant procedure where it is specifically permitted under the present Law, and subject to what is regularly established.
Article 48(5) of LP-2015 limits the possibility of amending claims where their “subject matter goes beyond the content of the patent application as initially filed.”
The Supreme Court cited another criterion applied by the EPO Boards of Appeal in this area, again without binding effect:
‘The content of the application as filed’ refers to information disclosed by the entire application, understood as including the claims, description and drawings.36
Assessing this cause of invalidation logically requires a comparison between the claims in the patent application and those in the patent as granted. The claim is invalid if new protected subject matter has been added – if it incorporates new technical features that the skilled person would not consider to be clearly and directly derived from the application.37
12.4.1.4 The expansion of protection
With reference to the patent granted, as in the previous instance, Article 48(6) of LP-2015 prohibits amending the granted patent during the opposition or, as the case may be, the limitation procedure, so as to extend the protection conferred by the patent. Article 102(1)(d) of LP-2015 provides for the invalidation of a claim “when the protection conferred by the patent has been expanded after being granted”. Just as in the case of added content above, the patent originally granted must be compared with the amendment made after an opposition or limitation procedure conducted subsequent to its grant.
The Supreme Court explained that:
Limitation is an amendment made to claims as provided for in Article 105 of LP-2015 and Article 105a of the EPC. Limitation can therefore neither add new subject matter for protection (Article 48(5) of LP-2015 and Article 123(2) of the EPC), nor expand the scope of protection (Article 48(6) of LP-2015 and Article 123(3) of the EPC).38
12.4.1.5 Patent registered by a person not entitled to obtain it
Article 10(1) of LP-2015 begins as follows: “The right to a patent shall belong to the inventor or to their successors in title, and it shall be transferable by any of the means recognized in the Law.” This means that the inventor can apply for registration or transfer of their patent rights, but if the patent is granted to a person not entitled to obtain it, then such person who is so entitled may claim transfer of ownership, per Article 12(1) of LP-2015, or seek invalidation of the patent per Article 102(1)(e) of LP-2015.
Judgment of the Supreme Court 389/2019 of July 3, 2019, ECLI:ES:TS:2019:2244 (STS 389/2019): “Prior rights derived from the state of the art and potentially negating the novelty of an impugned invention must be assessed one by one and compared with the invention based solely on their content. This comparative judgment must be made individually for each prior right, so that an invention cannot legitimately be found to lack novelty based on a combination of several pre-existing elements.”
STS 389/2019: “Article 54 of the EPC (as well as Article 6 of LP-2015) provides that an invention shall be considered to be new if it does not form part of the state of the art, and that the state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way. Lack of novelty may result from a written description, derived from what is explicitly indicated in the prior document […] or implicitly disclosed, which together, would have inevitably led a skilled practitioner in the art, when putting the prior document’s teachings into practice, to obtain the same results as described in the claim. Legal certainty requires that the inference be clear, direct and unequivocal, equating the term inevitable with the terms ineluctable, inescapable, or unavoidable, such that the impugned decision should not in the least be faulted for applying a criterion followed by decisions of the EPO Boards of Appeal that ‘the word inevitable means unfailing, certain to occur, something that must happen or arise, so true as to preclude valid alternative solutions; it is equivalent in other words to 100% probability’ (T 396/89, T 793/93).”
Judgment of the Supreme Court 124/2022 of February 16, 2022, ECLI:ES:TS:2022:531 (STS 124/2022), citing Judgment of the Supreme Court 263/2017 of May 3, 2017, ECLI:ES:TS:2017:1653 (STS 263/2017): “while the invalidity of the first independent claim does not prejudice the validity of the dependent claims, however, the validity of the main claim prevents the invalidity of the dependent claims from being questioned.”
STS 124/2022, referring in turn to Judgment of the Supreme Court 182/2015 of April 14, 2015, ECLI:ES:TS:2015:1703 (STS 182/2015); Judgment of the Supreme Court 325/2015 of June 18, 2015, ECLI:ES:TS:2015:3194325/2015 (STS 325/2015) and STS 263/2017.
STS 124/2022: “It is the established case law of this chamber that ‘there is no single method for the judicial assessment of inventive step, yet the method followed must ensure that such assessments take decisive factors into account (STS 182/2015)’”.
STS 124/2022.
Judgment of the Provincial Court of Barcelona 1610/2021, July 27, 2021, ECLI:ES:APB:2021:8276 (SAPB 1610/2021).
SAPB 1610/2021.
Judgment of the Provincial Court of Barcelona 513/2023 of December 14, 2023, ECLI:ES:APB:2023:15254 (SAPB 513/2023).
STS 182/2015, and STS 325/2015.
STS 124/2022.
SAPB 513/2023: “incorporates new technical characteristics that the skilled person would not consider to be clearly and directly derived from the application, as we explained in our Judgment No. 14/2022, of January 13, 2022 (ECLI:ES:APB:2022:1), which in turn cites two other judgments by the same court: Judgments No. 593/2019, of March 29, 2019 (ECLI:ES:APB:2019:2939) and No. 2752/2020, of December 15, 2020 (ECLI:ES:APB:2020:12688).”
SAPB 513/2023.