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Propiedad Industrial e Intelectual

Appeal Court of Barcelona allows going ahead with damage claims of preliminary injunctions irrespective of the proceedings on the merits

Section 15 of the High Provincial Court of Barcelona has issued up to ten Orders lifting the suspensions in ten damage requests proceedings filed by pharmaceutical companies that have suffered preliminary injunctions (hereinafter PI) based on the infringement of a patent right.

Within a year after lifting the PI the defendants filed a complaint to claim the damages that they have suffered as a consequence of the granting of PI. The defendants in the PI request had to cease the marketing in the Spanish market of their generic medicaments because prima facie the first instance court considered that those generic medicaments infringed a pharmaceutical patent on an extended realize form.

The defendants were obliged to file the damage claim within a year after the lifting of the PI based on a previous Order of Section 15 of High Provincial Court of Barcelona that stated a deadline of one year. However, the plaintiff of the PI requested to stay the damage claim proceedings as long as the proceedings on the merits on patent infringement remain. The plaintiff considered that in case the defendants were condemned for patent infringement it would mean that they should have never introduced the generic medicaments on the Spanish market, so they should not be entitled to request damages for something that they should have never done. Commercial Court number 10 of Barcelona accepts the grounds of the plaintiff and it decided to suspend the damage claim proceedings.

However, the PI proceedings have its own requirements that are different from those ones of the proceedings on the merits. PI are seek under the liability of the plaintiff (art. 721 of Civil Procedure Act –hereinafter CPA) and the plaintiff has to fulfil three requirements: the danger in the delay; the presumption of good right (art. 728 CPA); and the exploitation of the invention in Spain or in the territory of a member State of the WTO, in a sufficiently manner to satisfy the national market (art. 83 in relation to art. 133 of the Patent Act –hereinafter PA). Those requirements are not related to the proceedings on the merits, in fact the evidence that is used in PI proceedings may be different in the proceedings on the merits.

In addition, in a PI request the plaintiff shall secure a bond that will be used to respond for the damages caused by the PI. This requirement is compulsory to enforce the PI. This is consistent with articles 742, 743 and 744 of the CPA that state that once the court order lifting PI, at the request of the defendant, the damages caused, as appropriate, by the revoked injunction, shall be determined and, once determined, the applicant for the measure shall be requested to pay the said damages and, should he fail to do so, their compulsory exaction shall be carried out immediately.

According to the above grounds, the companies that suffered the PI appealed the first instance Order that decided to stay the damage claim proceedings while the proceedings on the merits remain. Section 15 of the High Provincial Court of Barcelona in its ten Orders accepted the appeal, revoked the first instance decision and decided to continue with the damage claim. In the end, if the defendants are condemned in the proceedings on the merits for patent infringement to pay damages the plaintiff and the defendants may have debts to be compensated, but this does not mean that the defendants do not have a right to initiate the damage claim.

The Orders also remind that the liability of the patentee requesting the granting of PI is objective, so it is not necessary to prove fault of negligence by IP requesting party (see our comment dated 13/5/2014).