In countries where patents and utility models (sometimes called “petty patents”) co-exist, a recurrent question is which is the level of inventiveness required for utility models as opposed to patents. According to article 8 of Spain’s 1986 Patents Act, which mirrors article 56 of the European Patent Convention, an invention protected by a patent is…
Until recently, cases involving “Supplementary Protection Certificates” (so-called “SPCs”) were relatively rare in Spain. This is due to the fact that, as a consequence of the transitional provisions of article 21 of Regulation 1768/1992 (the “SPC Regulation), SPCs became available in Spain later than in other European Union member states. However, over the last few…
On 30 July 2012, Commercial Court number 5 of Barcelona handed down an interesting decision that has brought again to the fore the legality of so-called “preparatory acts” (in particular, obtaining marketing authorisation and price). The facts of the case may be summarised as follows: Merck Sharpe & Dohme (“MSD”) owns a Supplementary Protection Certificate…
One of the recurrent topics in patent litigation in Spain is whether or not a Court can review the validity of a patent in the context of preliminary injunction proceedings. According to some Courts, life is too short in preliminary injunction proceedings. If the Court had to embark upon analysing the validity of the patent,…
On 9 July 2012, Commercial Court number 2 of Barcelona dismissed a revocation action filed by two Spanish companies against patent EP 907,364, which protects a sustained-release formulation of quetiapine. To sum-up, this formulation comprises a gelling agent such as HPMC and quetiapine or a pharmaceutically acceptable salt thereof, together with one or more pharmaceutically…
One of the points of contention in cases where inventive step is discussed is which expert is better suited to express an opinion on whether or not the invention would have been obvious for the person skilled in the art. English Courts, for example, have a long-standing tradition of carefully scrutinising the experts presented by…
Today it seems to be commonplace that without a patent system people would be less motivated to invest time and resources into making inventions that may foster technological progress. What is less clear is where the origins of this concept should be traced. Ancient Greece, which made so many contributions to knowledge, neglected the practical…
TRIPS has historically been criticized on the grounds that it makes access to medicines in developing countries more difficult. To address this concern, on 30 August 2003 the World Trade Organization (“WTO”)’s General Council approved a Decision aimed at implementing the famous paragraph 6 of the Doha Declaration of 14 November 2001. To sum up,…
One of the most controversial provisions of the Spanish Patents Act is article 137.2, which states “Where the measures requested involve restrictions on the defendant’s industrial or commercial activity, the judge shall, when deciding with respect thereto, fix the amount of the security by which the said defendant may at any time substitute the effectiveness…
One of the challenges of patent litigation in Spain is that our Civil Procedure Law is somewhat more formalistic than the laws of some other EU Member States, which would normally accept documents filed in English. Under article 144 of the Civil Procedure Law, parties are required to file a translation of documents written in…
