One of the points sometimes debated in patent cases is the date when a claim for patent infringement becomes “time-barred” (i.e. the date on which it “prescribes”). The traditional position adopted by the courts in countries like Germany and Spain is that in the case of continuing acts of infringement, the time-barred period (e.g. 5…

Barcelona Commercial Court no. 5 handed down a judgment quashing the claimant’s DNI action without ruling on the merits of (non-)infringement. The Court found that the claimant had standing to file the DNI. However, one of the procedural pre-requisites for a DNI action had not been met: the claimant was neither industrially exploiting any actual…

Upon reading the title of this blog entry, readers may be wondering what the “ex re ipsa” doctrine involves. It therefore may be worth clarifying that it is a legal doctrine applied, for example, to cases dealing with damages, where the damage is presumed to have been caused (“causality”) when it is inherent to the…

On 13 April 2018, the Barcelona Court of Appeal (Section 15) wrote a decision highly illustrative of the challenges that an “added matter” objection may raise in Spain, particularly in the context of preliminary injunction proceedings. The decision confirmed a ruling of 18 July 2017 from Barcelona Commercial Court number 4, which had lifted a…

The influential Barcelona Court of Appeal corrected a finding of the Barcelona Patents Court, which – to great surprise – had lifted an injunction on finding that Swiss-type claims were affected by the Spanish Reservation to the European Patent Convention, and thereby ineffective in Spain. Although this decision arrived only after SPC expiry and thus…

Historically, the Spanish Patents and Trademarks Office (“SPTO”) has rejected the correction of the registered term of supplementary protection certificates (“SPCs”), even in cases where such term has had to be recalculated due to the new case law emanating from the Court of Justice of the European Union (“CJEU”). As reported in our posts of…

In injunction proceedings decided in just a few hours (likely a record in Spanish patent litigation) in the context of the 2018 Mobile World Congress, Barcelona Commercial Court no. 4 granted a preliminary injunction. However, it also allowed the infringer to lift the injunction by providing a “counter-guarantee”. Thus far a very exceptional occurrence, this…

In July 2017, the Patents Court of Barcelona handed down a decision finding that “Swiss-type” claims were affected by the Reservation made by Spain when it ratified the European Patent Convention (“EPC”), whereby European patents, insofar as they confer protection on chemical or pharmaceutical products “as such“, shall be ineffective in Spain. In particular, the…

In a judgment in a low-key dispute concerning the infringement of a utility model, the Barcelona Court of Appeal (Spain’s most influential patents court) held that the scope of protection of a two-part claim was determined by its characterising portion, and not by the preamble portion. This finding, which should apply to patents as well,…

In preliminary injunction proceedings, the influential Barcelona Court of Appeal held that reasons of “congruence” bind the court to basing the assessment of inventive step strictly on the particular prior art document chosen as the closest prior art by the party challenging its validity, regardless of whether that choice is technically and objectively justified. This…