On 15 January 2025, Section 32 of the Provincial Court of Madrid handed down Judgment no. 3/2025 (ECLI:ES:APM:2025:114), by which it dismissed the appeal filed by the company Automatización del Internet de las Cosas, S.L. against the decision of the Spanish Patent and Trademark Office (SPTO) rejecting patent application P202030106, relating to a “fire extinguisher, system and procedure for fire extinguishing training with augmented reality“.
The Judgment thus confirms the decision to refuse the patent for lack of inventive step, in accordance with the provisions of article 8.1 of the Spanish Patent Act. Additionally, it denied the possibility of converting the patent application into a utility model, as the deadline for doing so had passed.
The invention sought to protect a system comprising a fire extinguisher with sensors, a training procedure, and the use of augmented reality glasses. In particular, according to the claims of the application, the device incorporated pressure sensors, a wireless communication module, safety ring presence sensors, angle of attack sensors and identification tags (QR type), both for the extinguishers and for the simulated fire outbreaks. In the applicant’s opinion, this was a novel and useful solution for training non-experts in realistic environments using augmented reality, differentiating it from previous technologies based on virtual reality.
Both the SPTO and the Provincial Court concluded that the invention did not make a sufficient technical contribution that would not be obvious to a person skilled in the art. According to the judgment in its second ground of law, the closest prior art document, identified as D01 (KR20160109066B1), already described a training system with real fire extinguishers using sensors (pressure, safety ring and angle of attack), wireless communication and virtual reality. The main difference between the application and the D01 document was that the invention proposed the use of augmented reality, incorporated QR tags for the identification of the type of fire and extinguisher, and gave the pressure sensor a specific function to deduce the position of the trigger. However, the court considered that these differences did not provide a technical solution that was not already obvious to a professional in the sector.
The Court applied the “problem-solution” approach set out in the Examination Guidelines of the European Patent Office, which requires identifying three steps: (1) the closest prior art, (2) the objective technical problem, and (3) whether the solution provided by the invention would be obvious to a person skilled in the art from the existing prior art.
The Court insists that the assessment of inventive step must be made from the perspective of a person skilled in the art, considering only the knowledge available at the priority date of the application. As the judgment states in its Second Ground of Law: “In applying this method, ex post facto examination must be avoided and, consequently, the prior art must be analysed without taking into consideration the lessons learned from the invention in question. [The question is not whether the skilled person could have arrived at the invention by adapting or modifying the closest prior art, but whether he would have done so because he was led to do so by the prior art“.
Applying the “problem-solution” approach, the Court concludes that the invention lacks inventive step, as the proposed solution – the joint use of sensors, QR tags and augmented reality glasses – was a technically obvious choice in light of the available prior knowledge. As also explained in the Second Ground of Law of the Judgment: “Taking into account the prior art it must be concluded that, for the person skilled in the art, combining the prior knowledge and the common general knowledge, the solution that the invention poses for the technical problem described would have been obvious, […] without the application envisaged in the invention involving a new and innovative element“.
The judgment underlines that the mere combination of previously known technical elements – even if applied in a different context, such as augmented reality instead of virtual reality – is not sufficient to meet the requirement of inventive step if such a combination would be obvious to a person skilled in the art.
In addition, the appellant posed an auxiliar request that the patent application be allowed to be converted into a utility model. The Court also rejected this request on the grounds that it had been filed outside the legally stipulated time limit. This is set out in the Judgment in its third ground of law: “In the present case, it is stated on page 71 of the file that on 3 April 2023, the SPTO informed the applicant of the end of the substantive examination of the patent application […] informing her that, in accordance with article 51.1 of Patent Law 24/2015, the possibility of requesting the conversion her patent application into another type of industrial property ended. Consequently, the request formulated in the application cannot be granted as the legally established period for the exercise of this option has elapsed“.Consequently, the Provincial Court dismissed the appeal in its entirety and upheld the administrative refusal decision, with the appellant being ordered to pay the costs. The inventive step that could perhaps have been overcome had a utility model been applied for in time (in Spain as the technical solution provided by the applicant in a utility model must be “very obvious” to the person skilled in the art in order to be able to say that it is not inventive), could not be defended as the conversion was not applied for within the period established by law.