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Propiedad Industrial e Intelectual

The limitation of the patent in a nullity action of an SPC

Judgment dated 15 October 2012 of the Commercial Court nº 8 of Barcelona declared that an SPC on a combination of two pharmaceutical ingredients was null and void, because the basic patent of this SPC did not mention the specific combination in the claims. So, it was declared that the SPC infringe article 3(a) of the Regulation (EC) nº 1768/92 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products. The judgment was in line with the ECJ case law, in particular Judgments of 24 November 2011 (C-322/10 and C-422/10) and Orders of 25 November 2011 (C-6/11, C-518/10, C-630/10).

When the action was brought by the plaintiff, the owner of the SPC and of the patent filed a counterclaim to limit the patent based on Article 138.3 of the EPC to include in one of the claims of the basic patent the combination of the pharmaceutical ingredients that are the object of an SPC. After a request of the plaintiff, the Court did not give permission to proceed with the counterclaim since it considered that the patent cannot be limited according to Article 138.3 of the EPC because the plaintiff had not challenged the patent but the SPC, and in addition this challenge, had not been based on the nullity of the basic patent.

The patentee filed two appeals before the High Provincial Court of Barcelona. The first appeal was filed against the Decision that did not permit to proceed with the counterclaim and subsidiarily it appealed against the Judgment.

In its Decision dated 3 April 2014 The High Provincial Court of Barcelona admitted the first appeal filed by the patentee, declared the nullity of the first instance proceedings and it sent the case back to the first instance Court in order to proceed with the counterclaim.

The High Provincial Court considered that, as a general rule, any Court has to give permission to proceed with a counterclaim although it is considered that the connection with the main claim of the plaintiff may be inappropriate, which is something that in the end has to be decided in the final Judgment, but it is not a ground to dismiss the permission to proceed with a counterclaim.

Therefore, the Decision of the Appeal Court of Barcelona does not mean that the counterclaim to limit the patent will be admitted, or that in case it is admitted, the SPC would be automatically validated even though it was granted infringing the Regulation (EC) nº 1768/92 of the European Parliament and of the Council of 6 May 2009 concerning the supplementary protection certificate for medicinal products.