LICONSA v. BOEHRINGER, Court of Appeals of Barcelona, 29 March 2019, Docket No. 1076/2017 / Request for limitation of a patent before the Spanish Patent & Trademark Office (SPTO) during judicial proceedings

In a decision dated 29 March 2019, the Court of Appeals of Barcelona made clear that, since the entry into force of the new Spanish Patent Act 24/2015 in April 2017, if a patentee intends to file a request for limitation of its patent before the Spanish Patent and Trademark Office (SPTO) during ongoing invalidity judicial proceedings, it is mandatory to seek permission from the Court handling the case.

The plaintiff, LABORATORIOS LICONSA S.A. (hereinafter, “LICONSA”), filed an invalidity claim before Barcelona Commercial Courts against patent EP 1379220, validated in Spain as ES 2236590 (ES 590), owned by BOEHRINGER INGELHEIM PHARMA GMBH (hereinafter, “BOEHRINGER”), for lack of novelty and inventive step.

The entire English summary can be read here.

The decision (in Spanish) can be read here.

Headnote and summary: Luis Fernández-Novoa, HOYNG ROKH MONEGIER

If you would like to know more about this decision that we have been informed has been appealed before the Supreme Court, please go to Kluwer patent blog where you will find the analysis of BOEHRINGER counsel.