According to the Spanish Patents Act, as a general rule, non-exclusive licensees do not have locus standi. However, when a third party is infringing the patent, they may require the patent owner to take action. According to the Law, if the patent owner fails to take action within three months, the non-exclusive licensee may then…

Earlier this year, the Commercial Courts of Barcelona published a decision which shows that patent owners cannot obtain “Diligencias para la comprobación de hechos” (“Proceedings for the Verification of Facts”; a procedure roughly equivalent to the French “Saisie-contrafaçon“) in Spain unless they carefully prove that the application fulfils certain conditions. In particular, in its Decision…

One of the possible methods to examine incentive activity is what is known as the “problem and solution approach” usually applied by the European Patent Office (“EPO”). Spanish Courts like this methodology, as it allows the Judge to subject the opinions expressed by the experts to an objective test. For example, in a judgment of…

As readers know well, over the last few years courts around Europe have handed down several ground-breaking decisions on the scope of “second medical use” claims and, in particular, the activities required of third parties to guarantee the fair protection of such claims. Most of these decisions have revolved around the Lyrica® (pregabalin) patent, which…

The main requirements for applying for a preliminary injunction in Spain are “fumus boni iuris” (i.e., indicia of likelihood of success) and “periculum in mora” (i.e. danger in the delay). A recent decision handed down by the three Barcelona patent Judges (the Judge Rapporteur was the Judge in charge of Commercial Court number 5) has…

In a recent judgment of 2 February 2016, the Barcelona Court of Appeal (Section 15) was called on to interpret the scope of protection of what are known as “product-by-process” claims. One of the issues discussed by the parties was whether the scope of protection of claim 1 of patent EP 731.646 B1, which claims…