Barcelona Patent Courts

In a "collective" decision, the Barcelona Patent Courts dismissed a preliminary injunction applied for by the owner of an SPC against a number of generic companies, by rejecting effect to the revised translation of a European Patent granted in Spain adding product claims. The court based its decision on the reservation in the original provisions of the Spanish Patents Act which prohibited patents for chemical and pharmaceutical products.

In addition to the subject-matter of the case, the order is relevant as it sets out the unanimous criteria of the Barcelona Patent Courts (i.e. Commercial Courts no. 1, 4 and 5) in such matter. As of 1 January 2012, the three courts have been assigned exclusive competence to hear all patent cases launched before the Barcelona courts and are the first truly specialized patent courts in Spain. According to the ruling, the three patent judges had discussed and decided the case together, in view of its complexity.

Under the original provisions of the Spanish Patents Act of 1986, chemical and pharmaceutical products had not been patentable in Spain until 7 October 1992. After years of controversy between innovators and generics, in May 2011 the Supreme Court declared in Laboratorios Cinfa et al. v. Eli Lilly and Company that the TRIPS agreement was directly applicable in Spain and that by virtue of Article 70.2 (Protection of existing subject-matter), the reservation (the former Aticle 167.5 of the European Patent Convention (EPC)) could no longer apply to patents granted and in force on 7 October 1992.

In the case at issue, the plaintiff was the owner of a European Patent[1], applied for under the reservation. Hence, the patent originally granted for Spain (first in English but later validated by the filing of its Spanish translation with the Patent and Trademarks Office (PTO)) did not contain product claims. Years later the patent owner deposited a revised translation of the patent which included a number of product claims. After the PTO rejected the new claims, the case moved to the Supreme Court which granted the claims on the basis of the application of article 70.2 of the TRIPS agreement.

The new claims were published before the launch of the preliminary injunctions. The SPC had been applied for and obtained on the basis of the original claims and original translation.

In its decision on the preliminary injunction, the Patent Court of Barcelona first mentioned the nature of the SPC. The court said that in light of the CJEU judgment of 13 July 1995 (C-350/92, Kingdom of Spain v. Council of the EU), an SPC is not different from a patent. It complements the temporary effective protection of the base patent and is subject to the same limitations and obligations.

The court then said that the patentee could not extend the scope of protection of the basicatent by filing a revised translation of its claims. Under Article 70 of the EPC, a translation can only be accepted if it grants a more limited protection than the original granted patent. However, in the case at issue, the revised translation had extended the protection, because the product claims, although granted for other countries, had not been granted for Spain by the European Patent Office which was the only competent authority to amend them. In addition, Article 123.3 of the EPC would not entitle the patentee to extend the protection of the European Patent.

Hence, the scope of protection of the patent and the SPC was determined by the original translation which did not include product claims. The court acknowledged "the enormous difficulty of the case"; however, given that the patentee had based his claims on the product claims, the preliminary injunction had to be rejected for lack of likelihood of success.

The court's position is hardly compatible with the prior decision of the Supreme Court to publish the revised translation. It also makes the application of the TRIPS agreement rather complicated. At the same time, a change in the position of the court in the proceedings on the merits seems difficult, unless in the meantime the Appeal Court of Barcelona rules differently in the appeal proceedings of the preliminary injunctions.