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…
One of the topics most hotly discussed before the Spanish Courts over the last few years is whether the legal effects of the TRIPS‘ provisions on patents are governed by Community law or by the national law of each Member State. The debate was sparked in 2003, when a German manufacturer of generic pharmaceuticals filed…
One of the new question marks introduced by Directive 2004/48 (the so-called “Enforcement Directive”) is what amount of indicia is required to prove that an act of infringement is “imminent” for the purposes of obtaining a preliminary injunction aimed at prohibiting such act. Although the declared goal of the Enforcement Directive was to strengthen the…
One of the most disputed topics within the patent community is whether or not the patent prosecution history should be taken into account when interpreting the scope of protection of the claims. Whereas U.S. Courts have traditionally accepted the so-called “file-wrapper estoppel” or “patent prosecution estoppel” defence, the answer on this side of the Atlantic…
On 1 March 2010, Commercial Court number 1 of Pamplona handed down a judgement dismissing a declaratory non-infringement action filed by L.C. against N. The Court rejected the claim in its entirety, on the ground that L.C. lacked “locus standi”, as it was not L.C. but a third party who was supposedly to carry out…
In this case the Commercial Court lifts an ex parte preliminary injunction against the launch of several generics of Pramipexol after an inter partes hearing. The ex parte decision was grounded on a Supplementary Protection Certificate based on a patent granted under the 1929 Patents Act. One of the claims of the patent was construed…
The Barcelona Court of Appeal found that the process used by the defendants to obtain amlodipine was not equivalent to the process protected by the patent in suit. The Court relied on the three Catnic questions test, applied by the English Courts until 2004, to come to this conclusion that the patent was not infringed…
