The last year has kept some Spanish Courts busy with a debate that already caught the attention of English Courts at the beginning of the XX century, that is, whether “omnibus” claims are enforceable. Article 100 of the “Estatuto de la Propiedad Industrial” of 1929 required that the last claim of the patent was an…
On 12 July 2010 the Supreme Court handed down a long-waited judgment, dismissing a complaint filed by a manufacturer of generic medicaments against a patent owner that had threatened more than one hundred wholesalers with patent infringement actions. The facts of the case go back to 2003, when a Court of First Instance of Madrid…
One of the topics that have kept our Courts busy over the last few years relates to which test should be applied to judge “equivalence”. Whereas the U.S.’s “same function-same way-same result” test has been accepted in cases involving mechanical patents, it has been discarded in cases dealing with chemical patents. In its judgment of…
The entry into force of the EPC 2000 on 13 December 2007 presented, for the first time in Spain, the possibility of amending claims in legal proceedings followed before national Courts where the validity of the patent has been questioned. This has sparked debate as to whether the application of article 138 will require the…
One of the most contentious points discussed before Spanish Courts over the last few years is the question of whether or not Courts should examine the validity of the patent when this has been raised as a defence in the context of preliminary injunction proceedings. On 17 June 2010, the Court of Appeal of Barcelona…
In appeal proceedings against a granted ex parte injunction, the Court of Appeal considered that the test whether there is an imminent threat of infringement must be based on objective criteria.. There is an objective threat of infringement if the defendant obtained a marketing authorisation and a price. The Court considered the conditional intention not…
After the implementation of the “Bolar provision”, introduced into Spanish law through Directive 2004/27, the Courts of Appeal of Navarra, Madrid and Barcelona decided that the new provision should be applied retrospectively since, in their opinion, the law that incorporated the Directive simply “clarified” that the acts exempted from patent infringement by the “Bolar provision”…
According to Article 61.2 of the Spanish Patent Act “where a patent concerns a process for the manufacture of new products or substances, unless there is proof to the contrary, it shall be presumed that any product or substance with the same characteristics has been obtained by using the patented process“. Over the last few…
One of the first questions that arise when a patentee is considering embarking on patent litigation is “Where should I sue?”. The answer to this question depends on a variety of factors, such as the workload of the Courts, their experience in patent cases, the convenience of the patentee and, of course, the legal framework…
The possibility of enforcing, in Spain, the non-translated claims of a European patent is one of the issues dealt with by the Barcelona Court of Appeal in its recent Ruling dated 15 April 2010. In that particular court case, a European patent holder applied for interim injunctions on the basis of a revised translation of…
