On 18 December 2018, the Provincial High Court of Barcelona dismissed the appeal filed by Bayer against the judgement of the Court of First Instance, which had in turn dismissed the petition of infringement of two of its patents by several generic companies. The two patents protected different aspects of a process for obtaining the active ingredient drospirenone. The first of these patents had been upheld, on a limited basis, by the European Patent Office. The second had been revoked by the Boards of Appeal a few months before the decision was adopted by the Court of Appeal of Barcelona.
Focusing the legal analysis on the first patent, the judgement of the Court of Appeal took into consideration one of the defendants’ main pleadings, who alleged that the company manufacturing the medicinal product, also sued for infringement in Barcelona, had filed an action for the revocation of the first patent in 2009 in the courts of Burgos. On 31 July 2014, a judgement was ruled revoking the patent in the Court of First Instance and, on 15 December 2015, the Provincial High Court of Burgos upheld the revocation of the patent.
Bayer argued in the Court of First Instance that the patent in suit in Barcelona (the limited version in the appeal lodged before the EPO) was not the same as the one that had been revoked in Burgos (the original version granted by the Examining Division). The Court of First Instance of Barcelona considered that these were two different versions of the patent and continued the proceedings until a judgement was ruled.
The Court of Appeal of Barcelona analyses the contents of the two judgements ruled in Burgos and draws the conclusion that, although the Court of First Instance only referred to the claims of the patent initially granted by the EPO, the Court of Appeal also examined the amended version in the proceedings before the EPO and ruled revocation of the patent in its limited version due to lack of inventive step.
The Court points out that the legal action in Burgos, far from lacking an object due to amendment of the patent, resulted in its revocation both in the Court of First Instance and in the Appeal Court. Given the revocation of the patent ruled by the courts of Burgos, the conclusion of the Court of Appeal of Barcelona is that the action filed by Bayer in Barcelona lacked the main element for it to succeed, which is that whoever filed such claim must be the proprietor of the patent in question.
This Judgement leads us to the question of the limits imposed on the patent proprietor to act legitimately based on its patent when it is not only being questioned by other courts in the same State, but it has been revoked by up to two levels of courts. What is the point of petitioning revocation of a patent before the courts if its proprietor can invalidate such action by merely petitioning the patent office for a limitation instead of the court that is hearing the action for revocation of the patent according to the procedural rules and times set in the relevant jurisdiction? The dispute should remain within such jurisdiction from the time the patent proprietor sustains the validity of the patent as originally granted or the limited version proposed to the court, as stipulated in Article 138(3) EPC: "In proceedings before the competent court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings".