An International Guide to
Patent Case Management for Judges

SAPB 513/2023: “11. It is true, as in this case, that an administrative procedure can be assessed indirectly, but it is not the central focus of the court's proceedings. Now, unlike the administrative procedure, where the burden of convincing the examiner fell on the applicant, in our case, the burden of convincing the court that the patent has not met one of its requirements, and specifically inventive step, falls on the party bringing action for invalidation, whether by way of defense or counterclaim. It must be left clear that it is not up to the plaintiff to prove again that their patent meets all the requirements; nor is it up to the judge to reassess the patent as if he were an examiner. It is up to the judge, according to Article 218 of the LEC, to render a decision coherent with the claims and pleas of the parties without deviating from the factual grounds or fundamental points of law argued by the parties. 12. The party opposing invalidation must prove that the patent, or more specifically the claim at issue, lacks novelty or an inventive step. That party does not have to prove that the examiner was mistaken in granting the patent, since, as we have said, invalidation proceedings are not about reviewing the patent granting procedure. The proof required must be sufficient to overcome the doubts of the court, because if the court has doubts, the case must be decided in favor of validity, by virtue of Article 217 of the LEC.”