dimanche, mai 01, 2011

Spain: Territorial jurisdiction over imminent infringement of pharmaceutical patents

The Barcelona Court of Appeal has issued a judgment that sets a significant precedent on territorial jurisdiction in cases of alleged imminent patent infringement.(1) The court interpreted Articles 125(2) and (3) of the Patents Act, stating that in cases of alleged imminent infringement of a pharmaceutical patent, the plaintiff need not file its action in the place where the defendant is domiciled, but may do so before the commercial court of the capital city of any of Spain's autonomous communities.

In this case the plaintiff filed an infringement action before the commercial courts of Barcelona, even though the defendants were domiciled in Madrid and Pamplona, respectively.

Article 125(2) establishes a general rule that the competent courts in patent cases are the commercial courts of the capital city of the autonomous community in which the defendant is domiciled.

Article 125(3) states that in the case of infringement actions, the plaintiff may choose to file suit before the commercial courts of the capital city of the autonomous community where the infringement took place or where the infringement had its effect.

The defendants maintained that Barcelona's commercial courts lacked territorial jurisdiction.
Among other things, they argued that:

  • Article 125(3) did not apply because at the time the lawsuit was filed, no infringement had taken place - the plaintiff's action was based on an alleged imminent patent infringement; and
  • even if the infringement had taken place, Article 125(3) should not be interpreted as allowing a degree of forum shopping that would entitle a plaintiff to file suit wherever it wishes in Spain, as forum shopping is contrary to Spanish, EU and international law.

However, the Barcelona Court of Appeal rejected these arguments and ruled that Barcelona's commercial courts had territorial jurisdiction to hear the case. The judgment states that according to Articles 125(2) and (3), in cases of alleged imminent patent infringement the plaintiff can file suit in the place where:

  • the defendant is domiciled;
  • the alleged patent infringement will take place; or
  • the effects of the alleged patent infringement will occur.

The decision was based mainly on two points.

First, Article 125(3) applies not only to cases in which patent infringement has taken place, but also to cases of alleged imminent infringement; to conclude otherwise would require a very strict and narrow interpretation of the provision.

Second, although the forum shopping argument is potentially sound, the wording of Article 125(3) does not specify that the article applies only when infringement (or its effect) occurs other than in the place where the defendant is domiciled. Rather, the provision states that a plaintiff is entitled to choose where to file suit.

The judgment states that in cases of alleged imminent infringement of a pharmaceutical patent, the plaintiff can file suit wherever it wishes, as the future infringing products would be commercialised - and the alleged infringement would take place - throughout the Spanish territory.

The defendants have appealed to the Supreme Court. In the meantime, it remains to be seen whether the approach taken by the Barcelona Court of Appeal is followed by other Spanish courts.

For further information on this topic please contact Miguel Gil at Grau & Angulo by telephone (+34 91 353 36 77), fax (+34 91 350 26 64) or email (m.gil@gba-ip.com).

Endnotes

(1) Decision of March 2 2011.