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…
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…
In recent years, the Commercial Courts of Barcelona have been called on to decide whether a claim depicting a Markush formula that did not show the stereochemistry of the compound protects only the racemate or also its enantiomers. The debate emerged in the context of an application for a preliminary injunction filed by Novartis based…
On 10 February 2012 the Spanish Court handed down a judgment where it accepted for the first time the concept of a “springboard” injunction as a remedy aimed at curing acts of infringement carried out before a patent expires. The background to the case may be summarised as follows: A manufacturer of generic drugs filed…
The Supreme Court dismissed an appeal , dismissing a revocation action against the patent in suit, which protected the calcium salt of atorvastatin. The Supreme court held that (i) the Bolar provision does not apply with retrospective effect, because its origin and rationale is different from the Experimental Use Exception; and (ii.) an invention that…
By Miquel Montañá In year 2021, Italy will celebrate the 600th anniversary of the patent granted by the Republic of Florence to Filippo Brunelleschi for his ship “Il Badalone”, the first patent ever granted. Quite ironically, the fathers of the first patent, and of the first Patent Act, approved by the Republic of Venice in…
