Patent trolls, also called “non-practicing entities” (“NPE”), a rather more elegant name, have become a serious threat to the patent system, particularly in the IT arena in the United States (“U.S.”). As readers will know, patent troll is the expression normally used to designate companies that simply hold patents for the purpose of forcing third parties to obtain a licence under a threat of litigation. Due to the vast amount of patent portfolios that they normally own and their complexity, quite often third parties prefer to pay a low royalty than embarking into the ocean of time, cost and complexity that delving into the validity and infringement analysis requires. However, when third part [...]

When a preliminary injunction is lifted, the debate arises regarding the amount of damages that the company affected by the preliminary injunction may claim against the applicant. A recent judgment of 6 May 2013 from Commercial Court number 6 of Barcelona has shed some light on this topic. The background of the case can be summarized as follows:

On 26 June 2009, Commercial Court number 6 of Barcelona ordered an “ex parte” preliminary injunction preventing a Spanish company from marketing generics of a patented medicament. After hearing the defendant, the preliminary injunction was then lifted on 29 January 2010. After the preliminary injunction was lifted, the defendant filed a complaint cla [...]

One of the remedies introduced by Directive EC 2004/48, of 29 April 2004, was preliminary injunctions aimed at prohibiting acts of infringement when there are indicia indicating that an act of infringement may be “imminent.” It is the nature of preliminary injunctions, which require an element of urgency, that patentees may be required to prove the need of a provisional prohibition before the main case is resolved. This is where the “imminent” requirement comes into play.

Against this background, in a recent case the parties discussed whether or not “imminence” is also a requirement for upholding an action aimed at prohibiting acts of infringement that have not yet taken place. In its judgme [...]

On 16 April 2013 the European Court of Justice (“ECJ”) handed down a judgment dismissing the nullity actions filed by Spain and Italy against Council Decision 2011/167/EU, of 10 March 2011, whereby an enhanced cooperation procedure was approved relating to the creation of a unitary patent (joint cases C-274/11 and C-295/11). This decision has of course sparked a debate as to whether it will put to rest the legal concerns raised on the substantive and procedural legal basis used by the EU’s institutions to move the EU unitary patent project forward in spite of the concerns expressed by Spain and Italy. To put this debate in context, the readers will remember that the Kingdom of Spain recently [...]

One of the topics hotly discussed within the intellectual property family over the last few years is whether or not “transit” is an act of infringement. Since, unlike patent law, trademark law is already harmonised at the EU level, many cases have reached the ECJ, which has generated a saga of judgments that does not appear to have satisfied anybody. In response to the criticism attracted by the last judgment of this saga (judgment dated 1 December 2011 in joined cases C-446/09 (Philips) and C-495/09 (Nokia), the European Commission has decided to include “transit” among the acts that the trademark owner is entitled to prohibit.

In particular, in its “Proposal for a Regulation of the Europea [...]

Spain adopted the optional clause in Article 65 of the EPC, which requires a translation of the patent filed with the national patent office within 3 months of publication of the patent by EPO. The Supreme Court decided that this term starts on the date of publication of the announcement of the granting of the patent by EPO.

A summary of this case will be posted on http://www.Kluweriplaw.com