The relevant facts of this judgement are as follows: 1) ICMA Sistemas, S.L. (hereinafter ICMA) entered into three research projects with the University of Vigo, financed by ICMA and partially subsidised by the Xunta de Galicia:

(i) The first, entitled “Modelling, simulation and experimental study of a geothermal system for small and medium consumers”, was directed by Arcadio, started on 10 July 2007 and had a duration of 12 months.

(ii) The second, entitled “Design and experimental development of a high energy efficiency geothermal heat pump prototype”, was directed by Vicente, started on 31 July 2009 and had a duration of 24 months.

(iii) And the third, entitled “Theoretical and experimental study for the development of geothermal heat pumps for high temperature applications”, was also to be directed by Vicente, started in October 2010 and ended in September 2012. 2) Ecoforest Geotermia S.L. is a company of the Bio Ecoforest S.L. group, incorporated in January 2012, whose corporate purpose relates to the manufacture and marketing of all kinds of heat pump appliances and equipment. Vicente’s wife, a doctor by profession, is listed as a founding partner of Ecoforest Geotermia. 3) On 5 October 2012, Ecoforest Geotermia applied for patent ES 2453740, granted on 8 April 2014, which consists of a system for the production of domestic hot water (DHW). The inventors of the patent are Vicente and Benedicto, CEO of the Ecoforest Group.

In this factual context, ICMA brought an action against ECOFOREST, among others, to claim the aforementioned patent, but the action was unsuccessful, based on the provisions of article 12.1 of the Patent Law applicable to the case, Law 11/1986, of 20 March (currently the same article of the current Patent Law 24/2015, of 24 July), according to which: “1. If the patent has been granted to a person not entitled to obtain it in accordance with the provisions of Article 10(1), the person entitled under that article may claim that the ownership of the patent be transferred to him, without prejudice to any other rights or actions to which he may be entitled”.

The action presupposes that the person who applied for the patent was not entitled to obtain it and that the claimant who is claiming it is entitled to it. To justify its legal standing, ICMA argues that it has developed the patented invention within the research projects carried out with the University of Vigo. However, it is clear from the evidence that the plaintiff could not be considered the inventor of the heat pump marketed by ECOFOREST, as there are substantial differences with respect to the IMAC SISTEMAS prototype. These differences are so significant that they cannot be said to derive from the results of IMAC SISTEMAS’ research projects, especially with regard to the latter, nor, therefore, from the prototype developed by IMAC SISTEMAS”.

STS (Civil) of 27 January 2022.