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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 [...]

Can a basic patent be amended under Art. 138.3 EPC to overcome a nullity action brought against its SPC?

The messy case law from the Court of Justice of the European Union (“CJEU”) on supplementary protection certificates (“SPC”) that protect “combinations” of pharmaceutical products has left many patentees that relied in good faith on the criteria laid down by the CJEU in the judgment of 16 September 1999, Case C-392/97 (“Farmitalia”) with patents whose claims are not totally aligned with the new criteria laid down in the judgment of 24 November 2011, Case C-322/10 (“Medeva”), and the ensuing saga. Readers will remember that in Farmitalia the CJEU responded that it was not for the CJEU but for national courts to determine whether or not a product is protected by the basic patent. This was cohe [...]

An expert must be an expert

On 22 October 2013 the Provincial Court of Barcelona (Section 15) handed down a controversial judgment revoking a patent due to lack of inventive activity relying on a technical report prepared by an expert acknowledged not to be an expert in the technical field of the invention. According to the judgment “[...] for an expert to be able to provide the point of view of the person skilled in the art – necessary in this case to assess the inventive activity -, it is not essential for the expert to be an expert but that, due to his training and experience, he is capable of putting himself in the position of the «person skilled in the art».” 

This point of view is at odds with the conclusio [...]

Levonorgestrel, Court of Appeal of Burgos, 2 September 2013

The Court of Appeal of Burgos dismissed the appeal against the Judgment of the Provincial Court of Burgos, which upheld a patent for a pharmaceutical composition and its use, despite the fact that clinical trials regarding the patented composition and the patented use were mentioned in the prior art.

The full summary of this case has been posted on Kluwer IP Law.

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Patent litigation around the kitchen: from ancient Greece to Thermomix.®

Spanish Courts have recently decided two interesting cases that show that patent litigation is not the exclusive realm of big pharma or high tech. Patent litigation extends its tentacles to quotidian cooking tools that we and / or our most significant others use day after day in the kitchen.

The first judgment, handed down by the Supreme Court on 6 June 2013, put to an end the long-standing judicial battle between the manufacturer of the famous “Thermomix®” automatic cooking machine and a Spanish company that manufactures another automatic cooking machine under the trademark “MyCook®”.

The proceedings began in 2007, when the claimant filed a patent infringement action against the defendant [...]

Clearing the way

A long time has already passed since 23 October 2001, when Judge Jacob ordered a preliminary injunction preventing the launch of the first paroxetine generics in England.  To cut a long story short, the rationale was that, if there is an obstacle blocking your way into the “garden”, you have to clear the way before entering the “garden”.  Otherwise, you may be injuncted.  This rationale has since then been followed by Judges in England, but also in other jurisdictions such as Germany.

 On 22 July 2013, Commercial Court number 4 of Barcelona handed down an interesting decision wherein the same logic transpires.  The patent owner had sent a warning letter to a third party who had obtained [...]

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