Claiming the possession of your alleged invention in Spain would possibly trigger you sorrow and ache


On 27 January 2022, the Spanish Supreme Courtroom handed down a really fascinating judgment coping with a dispute surrounding the possession of a patent software that claims a system to provide home cold and hot water. Judgments coping with patent possession are very scarce in Spain. Therefore the curiosity of this case, the background to which can be summarized as follows:

The complainant (ICMA Sistemas S.L., “ICMA”) is an organization that manufactures and markets geothermal warmth pumps. Between 2007 and 2012, ICMA entered into three analysis & improvement (“R&D”) agreements with the College of Vigo, financed by ICMA and partially sponsored by the area of Galicia. The director of the second undertaking was Mr. X. Within the context of those R&D tasks, the researchers on the College of Vigo and Mr. X had entry to a prototype warmth pump developed by ICMA.

In January 2012, the spouse of Mr. X, who’s a medical physician, based Ecoforest Geotermia S.L. (“Ecoforest”), an organization that manufactures and markets heating pump programs.

On 5 October 2012, Ecoforest filed patent software ES 2454740 (“ES ‘740”), which protects a system to provide home water. The inventors named had been Mr. X and Mr. Y, the director common of the Ecoforest group. Additionally, after the three R&D agreements had been accomplished, Ecoforest began to compete with ICMA on the warmth pump market.

Towards this background, ICMA filed a criticism in opposition to Ecoforest earlier than the Business Courts of Pontevedra (Galicia) the place, to sum-up, it claimed the possession of patent software ES ‘740 and it maintained that Ecoforest had carried out numerous acts of unfair competitors, together with acts opposite to the precept of excellent religion. On 6 February 2017, Business Courtroom quantity 3 of Pontevedra dismissed the criticism, discovering, in a nutshell, that the home water system claimed in ES’ 740 had variations with respect to the prototype developed by the complainant. That conclusion was reached after assessing the skilled opinions filed by each events.

ICMA filed an enchantment to the Pontevedra Enchantment Courtroom which, on 7 September 2018, dismissed the enchantment on comparable grounds (i.e., lack of identification between the prototype developed by ICMA and the system claimed in ES ‘740).

ICMA then filed an enchantment to Supreme Courtroom, which determined to listen to the enchantment. Nevertheless, after contemplating the arguments of the events, the Supreme Courtroom dismissed the enchantment. In relation to the declare to the possession of the invention, in response to the argument that the invention had its origin in ICMA’s prototype, the Supreme Courtroom thought of that the related query was whether or not or not all of the traits of the invention had been the results of the analysis carried out within the framework of the R&D agreements talked about above. The considering of the Supreme Courtroom is finest encapsulated within the following paragraph:

“The method is inappropriate as a result of, as not all of the technical traits of the patented invention in declare 1 had been within the prototype produced by the analysis work, it focuses on highlighting that the novelty lies the place they do coincide and, the place they don’t, there is no such thing as a novelty or ingenious step. It’s not a query of judging the novelty and ingenious step of the patented invention, however fairly of whether or not the possession ought to be ICMA’s because of the outcomes of the analysis, and as we’ve already indicated, this suggests that the invention as such, with all its technical traits and never simply a few of its characterising components, was the results of that analysis work. As this has not been demonstrated, we imagine that the declare was rightly dismissed.”

So, in conclusion, this enchantment was dismissed as a result of the Supreme Courtroom thought of that, for the criticism to succeed, the complainant ought to have proved that each attribute of the invention had been conceived by ICMA and/or within the framework of the R&D tasks talked about above.

The unfair competitors arguments met with the identical destiny. What follows displays how the Supreme Courtroom addressed one of the forceful unfair competitors pleas:

“The involvement of Mr. X, as a college professor, within the analysis undertaking will inevitably have contributed to enhancing his data of the topic of the analysis. Though benefiting from the outcomes of the analysis group, one thing that has not occurred on this case, could be an unfair act, the identical can’t be mentioned of the state of affairs the place, as soon as the undertaking had concluded and ICMA had executed the prototype ensuing from the analysis work, Mr Vicente developed a unique system with one other firm, utilizing data acquired within the analysis work.

The dividing line between benefiting from the outcomes of the analysis and utilizing the data that’s essentially acquired by whoever intervenes within the analysis work to then develop one other geothermic warmth pump which, when launched onto the market, competes with the pump ensuing from the analysis group, might not be very clear. However on this case, if we take a look at the conduct reported within the declare and the end result illustrated at first occasion by the skilled opinions, the defendants’ conduct didn’t represent unfair competitors as claimed, as there was no misappropriation of another person’s efforts, however fairly lawfully benefiting from the training acquired on account of participation within the analysis group.”

Whether or not or not making use of information partially acquired by means of R&D tasks financed by a 3rd celebration to develop a technological system which appears to be an enchancment of the prototype supplied by that third celebration and which is aimed toward competing with that third celebration is truthful, could in fact rely on the place the brink of equity is drawn. One of many fascinating factors for thought raised by this judgment is whether or not the brink of equity utilized is excessive, medium or low. Totally different readers will in all probability attain totally different conclusions.

All in all, the clear instructing of this judgment is that, except the invention claimed in a patent software filed by a 3rd celebration is similar to the invention that you just allege to have conceived, claiming possession of the invention in Spain will trigger you sorrow and ache.

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