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Barcelona Court of Appeal publishes most surprising Judgment on pharmaceutical patents, the role of the CJEU, and Art. 70.7 of TRIPS

Over the last decade, in some of the countries that did not introduce patent protection for pharmaceutical products until 1992, there has been an intense debate which has included, inter alia, the following two questions: (i) whether or not under Articles 70.2 and 27.1 of TRIPS, a patent granted following an application claiming the invention both of the process of manufacture of a pharmaceutical product and of the pharmaceutical product as such, but granted solely in relation to the process of manufacture, does, by reason of the rules set out in Articles 27 and 70 of TRIPS, have to be regarded from the entry into force of that Agreement as covering the invention of that pharmaceutical produ [...]

Will the new Spanish Patents Act introduce “protective writs” in Spain?

In September of 2013 the Spanish Patent and Trademark Office (“SPTO”) published a draft Patents Act, which will hopefully be approved by Parliament within the next few months, assuming that the election calendar so permits. During the last year, the draft has received numerous comments from the stakeholders concerned, including the Spanish competition authorities and the “General Council for the Judiciary” (“GCJ”), the administrative organ that governs the Spanish Judiciary.

One of the suggestions made by the GCJ at paragraphs 116-119 of its Report of 24 July 2014 has been the introduction of a procedure roughly equivalent to “protective writs.” In particular, the Report contains the followi [...]

Not accepting an undertaking entails an intention to market the allegedly infringing product

On 12 September 2014, the Barcelona Court of Appeal (Section 15) handed down a decision confirming a preliminary injunction preventing a Spanish company from marketing capsules claimed to be compatible with what is known as the Nespresso® system, which raises a handful of interesting legal points.

The first point of interest discussed was whether or not the appeal proceedings against the first instance decision which had ordered a preliminary injunction should be discontinued after the Court of First Instance (Barcelona Commercial Court number 5) handed down a judgment on the merits, upholding the infringement complaint.  After the judgment in the main proceedings came out, the complainant [...]

AIPPI approves Resolution aimed at helping rescue claims on second medical uses from the Valley of Death

As readers well know, over the years many patent offices around the world have opened the door to the patentability of so-called “second medical uses” to foster research on possible solutions to unmet medical needs based on the use of already known compounds. Although the most developed patent offices such as the European Patent Office (“EPO”) and the United States Patent Office (“USPO”) have a relatively long history of accepting these types of claims, their effective protection may be distorted by existing regulatory regimes. For example, in countries where electronic-prescribing (“e-prescribing”) software cause an active principle to be prescribed for all possible uses regardless of the f [...]

Legitimate interest in obtaining a Judgment on infringement from a national Court persists even after patent has been revoked by EPO

As the readers well know, the European Patent Convention (“EPC”) system allows the validity of European patents to be challenged through two different routes: (i) oppositions filed before the European Patent Office (“EPO”); and (ii) revocation actions filed before national Courts. This system, which has its advantages, has disadvantages as well. For example, it may result in a waste of the time, money and other resources invested into litigating before a national Court if, when the proceedings before the national Court are at an advanced stage, the train that is running in parallel before the EPO leads the patent to the revocation station.

In countries where Judges have discretion to decide [...]

Patentability of biotechnological inventions before the CJEU – A narrower construction of the “no-go zone” than in Brüstle or simply different facts?

On 17 July 2014, Advocate General Pedro Cruz Villalón issued his opinion in Case C-364/13 International Stem Cell Corporation v. Comptroller General of Patents, whereby he proposed that the Court of Justice of the European Union (“CJEU”) give the following response to a question referred by the High Court of Justice, Chancery Division (Patents Court), of England and Wales regarding the meaning of “human embryos” in article 6(2) (c) of Directive 98/44/EC: “Unfertilised human ova whose division and further development have been stimulated by parthenogenesis are not included in the term “human embryos” in article 6(2) (c) of Directive 98/44/EC of the European Parliament and of the Council of 6 [...]

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