ROS Roca S.A. v. Envac Centralsug Aktiebolag, Supreme Court, Barcelona, Spain, 17 October 2012, Case No. 431/2012, with thanks to Luis Fernández-Novoa and Álvaro Velázquez, Hoyng Monegier, for sending in the judgment and a summary in English
"The Spanish Supreme Court decided on a much debated point of Patent Law in Spain which had been subject to controversial decisions in the past and which the Supreme Court has now finally settled, which is the date on which European Patents shall be considered as effective in Spain.
"In the first instance decision by Commercial Court No. 3, which had granted the complaint for infringement of a waste management process patent filed by ENVAC against ROS ROCA and dismissed the counterclaim for invalidity filed by the latter, the Court had stated that the date from which damages (to be compensated according to the hypothetical royalties fee – which resulted in one of the biggest compensations ever granted by Patent Courts in Spain) should be starting to accrue is the date of the filing of the translation into Spanish of the European Patent before the Spanish Patent Office, in accordance with the provisions set by the Spanish Royal Decree implementing article 65 of the EPC (filing of a translation within 3 months after publication of the grant by the European Bulletin).
Goedecke Aktiengesellschaft & Pfizer, S.A. v. Laboratorios Rubió, S.A., Supreme Court, Spain, 14 June 2010, Docket No. 1801/2006.
The Supreme Court, by means of a decision dated 14 June 2010, declared the existence of infringement of the patent ES 2063219, owned by Goedecke Aktiengesellschaft (Goedecke) and licensed in Spain to Pfizer, S.A. (Pfizer) in relation to the gabapentin generic drugs intended to be marketed in Spain by Laboratorios Rubió, thus confirming the previous judgment handed down by the Court of Appeals of Barcelona on 17 May 2006.
Goedecke and Pfizer had brought legal actions against Laboratorios Rubió with occasion of the request for and obtaining by this company of an authorization to market in Spain several gabapentin generic drugs. Indeed, the plaintiffs understood that the obtaining of such authorization infringed their rights derived from the aforementioned patent, protecting a method for the stabilization of pharmaceutical compositions comprising cyclic amino acids, one of them being gabapentin. Goedecke and Pfizer had therefore claimed for the patent infringement to be declared, the cease and desist of any exploitation activities over gabapentin compositions having being obtained by implementing the patented process, as well as a compensation for damages suffered.
Laboratorios Cinfa, S.A. v. Pfizer Ltd., Pfizer Corporation & Pfizer, S.A., Supreme Court, Spain, 30 June 2010, Docket No. 1785/2006.
On 30 June 2010, the Supreme Court rendered a decision putting an end to the long-lasting proceedings in which Pfizer and Laboratiorios Cinfa (Cinfa) have been confronted for 8 years in relation to the marketing in Spain of generic drugs of amlodipine besylate. Contrary to what both the First Instance Court and the Court of Appeals had previously declared, the Supreme Court understood that Cinfa could not take advantage of the experimental use exception to patent rights -as drafted subsequent to the insertion of the “Bolar Provision” in the Spanish Patents Act- to elude the infringement of Pfizer’s patents ES 2012803 (EP 244944) and ES 520389 with respect to the activities carried out aimed at obtaining the corresponding marketing authorization from the Spanish Medicines Agency, thus declaring the Supreme Court the infringement of Pfizer’s patents.
Eisai Co. Ltd. & Pfizer S.A. v. Mylan Pharmaceuticals S.L., Commercial Court No. 5 of Barcelona, Spain, 29 December 2009, Docket No. 581/2009
Commercial Court No. 5 of Barcelona has confirmed its previous decision of 29 July 2009 pursuant to which it granted interim injunction inaudita parte against Mylan Pharmaceuticals (Mylan), which had been ordered to temporarily refrain from commercializing in Spain generic drugs with the active compound donepezil for the treatment of mild to moderate dementia caused by Alzheimer's disease.
Comment on Envac Centralsug AB v. Ros Roca, S.A., Court of Appeal (15th Section), Barcelona, Spain, 23 October 2008, with thanks to Álvaro Velázquez and Luis Fernández-Novoa Howrey Martinez Lage
"Recent decisions of the Commercial Courts of Barcelona specialized in Patent cases, like that of Court No. 3 of 30 March 2009, are relying on the findings of a late 2008 decision of the Court of Appeals of Barcelona to delay the effectiveness of granted European Patents (EP), even dismissing actions brought for infringements taking place before the publication of the Spanish translation by the SPTO.
"This case comment analyzes the different key aspects which the cited Decision of the Court of Appeals of Barcelona, which is one of the best IP Courts in Spain, overlooked in interpreting the exact date triggering the effectiveness of European Patents in Spain, applying a limiting interpretation of the EPC. Unless they are finally reversed by the Supreme Court, the findings of this decision shall undoubtedly affect future patent enforcement in Spain."
Read the entire comment (in English) here. Read the judgment (in Spanish) here.
Section 28 of the Court of Appeal of Madrid has recently confirmed the first instance decision ordering Teva Genéricos Española (Teva) to temporarily refrain from commercializing in Spain generic drugs with the active compound galantamine for the treatment of Alzheimer and related diseases.
Janssen had brought legal actions against Teva for the infringement of the SPC no. C 20010009, which, expiring on 15 January 2012, had been granted over the basic patent EP 236684, validated in Spain as ES 2000428. Said patent (and accordingly its SPC) protects the use of the compound galantamine, or a pharmaceutically acceptable acid addition salt thereof -which is the active compound of Janssen's Reminyl® product- to prepare a medicinal product for the treatment of Alzheimer and related diseases.
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