Like other countries, such as Australia or Germany, a “petty” patent or “utility model” can be obtained in Spain for so-called minor inventions. They present a twofold distinction with regard to “full-fledged” patents, when it comes to examining their patentability: (i) only documents disclosed in Spain form part of the state of the art; (ii)…

EC Directive 2004/48 (known as the “Enforcement Directive”) was implemented in Spain through Law 19/2006, which sought to harmonise, among other aspects, the criteria to establish damages in legal proceedings involving the infringement of intellectual property rights. In cases of patent infringement where the complainant claims profits lost or damages caused by the defendant, one…

On 12 July 2010 the Supreme Court handed down a long-waited judgment, dismissing a complaint filed by a manufacturer of generic medicaments against a patent owner that had threatened more than one hundred wholesalers with patent infringement actions. The facts of the case go back to 2003, when a Court of First Instance of Madrid…

One of the topics that have kept our Courts busy over the last few years relates to which test should be applied to judge “equivalence”. Whereas the U.S.’s “same function-same way-same result” test has been accepted in cases involving mechanical patents, it has been discarded in cases dealing with chemical patents. In its judgment of…

In appeal proceedings against a granted ex parte injunction, the Court of Appeal considered that the test whether there is an imminent threat of infringement must be based on objective criteria.. There is an objective threat of infringement if the defendant obtained a marketing authorisation and a price. The Court considered the conditional intention not…

After the implementation of the “Bolar provision”, introduced into Spanish law through Directive 2004/27, the Courts of Appeal of Navarra, Madrid and Barcelona decided that the new provision should be applied retrospectively since, in their opinion, the law that incorporated the Directive simply “clarified” that the acts exempted from patent infringement by the “Bolar provision”…