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…
Last December, the negotiations relating to the future creation of a Patent Court for the European Union (“EU”) collapsed as a consequence of the failure on the part of Germany, the United Kingdom and France to reach an agreement on the location of the so-called “central” division. As is usually the case in this type…
There seems to be ample consensus in that Justice is better administered by specialised Judges than by non-specialised Judges. With this view in mind, in 1993 the Barcelona Court of Appeal took a groundbreaking step forward by conferring exclusive competence to one section (Section 15) to hear appeals filed in intellectual property cases. The successful…
The recent judgment from the ECJ of 24 November 2011 in case C-322/10 (“Medeva”) has surprised the patent community, since the ECJ appears to have changed the view expressed in its judgment of 16 September of 1999 in case C-392/97 (“Farmitalia”), where the Court declared that it was not for the ECJ, but for national…
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…
Over the last few years, Spanish Courts have struggled to resolve an avalanche of cases where the core of the discussion was the legal effects of TRIPS on the effects of the Reservation made by Spain when it joined the European Patent Convention in 1986. According to this Reservation, patents filed before 7 October 1992…
