May a preliminary injunction be replaced with a bond?
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 of the said restrictive measures ordered”.
After the Patents Act came into force in 1986, in some cases this article was interpreted by some Courts of First Instance as imposing an obligation on the Judge to always fix a “substitute bond” in all cases where a preliminary injunction would restrict the industrial or commercial activities o [...]
Lost in translation
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 languages other than Spanish. In complex patent cases this is a bit of a challenge, since it is usual for most of the prior art documents, for example, to be written in English or other foreign languages.
To try to cut down on translation costs, one could be tempted to translate only the parts of the document that are relevant to the case. However, what may be irrelevan [...]
Does a Markush formula with plain bonds comprise both the racemate and its enantiomers?
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 a patent relating to Rivastigmine. Claim 1 of this patent contains a Markush formula where the stereochemistry of the compound is not depicted. According to the patentee, in the absence of signs limiting the scope of protection to the racemate or one of the enantiomers, the claim would generally protect the racemate and its enantiomers. On the contrary, the [...]
Supreme Court upholds first “Springboard” injunction
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 an application for a marketing authorisation of a generic of amlodipine besylate some months before the patent relating to this compound expired. The patent owner reacted by filing a patent infringement action seeking several remedies. Apart from the typical remedies (an injunction, damages, etc.), it requested the Court to order an injunction preventing the defendant from lau [...]
Where should the “central” division of the planned EU Patent Court be located: are we asking the wrong question?
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 of negotiations, in order to avoid the lack of agreement on this point jeopardising the negotiation process, over the years the negotiators had decided to put this hot topic on the back burner and defer a decision on this very difficult point for the time being. But now that the time has come to bite the bullet, the topic has become a stumbling block in the final stages of the n [...]
Commercial courts of Barcelona go one step further towards specialisation
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 experience of Section 15 inspired the Spanish Parliament when it created the new Commercial Courts (“Juzgados de lo Mercantil”), which began operating on 1 September 2004. Before the creation of these Commercial Courts, any civil Court of First Instance based in cities such as Barcelona or Madrid, which are the capitals of Spanish Autonomous [...]
