On 6 October 2011, Commercial Court number 5 of Barcelona handed down a judgment that has revisited the fine border between the safe territory of so-called “preparatory acts” and the prohibited region of “offers for sale”. MSD filed a patent infringement action against a Spanish company that had obtained marketing authorisation and price to market…

As the readers will know, the complex architecture of the European patent system allows third parties to challenge the validity of a patent by filing an opposition before the European Patent Office (“EPO”), by filing a revocation action before national Courts, or by using both routes. In some cases, this has given rise to the…

The readers will recall that one of the requirements for obtaining preliminary injunctions introduced by Directive 2004/48 (the so-called “Enforcement Directive”) is proving that there is an “imminent” threat of infringement. In cases dealing with the pharmaceutical sector, Spanish Courts have interpreted “imminent” to mean that the defendant is in an objective position to launch…

After years of not having handed down judgments in patent cases, in recent months the Supreme Court has handed down several interesting judgments which will hopefully give more guidance to lower level Courts. The last judgment in this recent saga, handed down on 18 July 2011, has confirmed the judgment of 19 December 2006 from…

The Commercial Court of Granada has just handed down a Decision dated 6 July 2011 which, as far as the author is aware, has admitted for the first time a post-grant claim limitation under article 138.3 of the European Patent Convention (EPC 2000) in Spain. The Decision has been made in the context of an…

The Court of Appeal of Barcelona lifted a preliminary injunction on the grounds that ‘omnibus’ claims (merely a reference to the description or drawings without specifically stating any technical features) included in patents granted under the old Patent Act 1929 are not enforceable. According to the Court, the omnibus claim in dispute is not an…

On 26 April 2011, the Supreme Court handed down an interesting decision en banc declaring that a Judge who had confirmed the validity of a patent while sitting on a Court of Appeal is not prevented from reconsidering the validity of the same patent while sitting on the Supreme Court. Ratiopharm had requested the removal…