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The Advocate General on the Spanish “unitary patent” challenges: A Statement of (Op-)position

 By Rechtsanwalt Dr. Ingve Björn Stjerna, LL.M., Certified Specialist for Intellectual Property Law, Düsseldorf. This article reflects the personal opinion of the author.

On 18 November 2014 Advocate General Yves Bot delivered his Statements of Position (afterwards “Opinions”) in terms of Spain’s nullity actions against the two Regulations on the “unitary patent”, his recommendation to the CJEU being a rejection of the complaints. Upon a closer examination, the impression arises that especially the Opinion in case C-146/13 largely tries to avoid any contextual debate of the critical aspects raised, e. g. in relation to the adequacy of legal protection at the European Patent Of [...]

Recent judgment from Court of Appeal of Navarre illustrates that launching at risk can be a painful gardening experience

Many readers, particularly those based on one of the islands to the Northwest of the Canal de La Manche, will remember the famous metaphor used by then Justice Robin Jacob in his Decision of 23 October de 2001 (paroxetine):

The defendants could, so soon as they settled upon the product they were intending to sell, have caused the litigation to start. They could have done a number of things: First, they could have launched a petition for the revocation of the patent and started a claim for a declaration of non-infringement. Or, since there are certain difficulties with the latter (for example onus of proof goes the other way round), they could simply have said to the patentees, “We intend (w [...]

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

1. Introduction:

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 pha [...]

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 [...]

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