News
English High Court requires to prescribe with the Trade Mark of the pharmaceutical product of the holder of a second medical use Patent.
The English High Court has taken a decision requiring that prescriptions of a pharmaceutical product protected by a second medical use patent be prescribed using the Trade Mark of the Patent holder when said pharmaceutical is prescribed to treat the disease protected by the second medical use Patent. The case concerns a dispute between the companies Warner-Lambert and Actavis in connection with the drug comprising the active ingredient pregabalin. Said drug has three different medical indications. For two of those indications patent protection has already expired. However, for the third one (pain treatment) Warner-Lambert has protection through second medical use Swiss-type claims (EP0934061).
PROBLEM: Most prescriptions made by doctors in the UK refer generically to the active ingredient without specific mention of the specific drug prescribed (Trade Name / Trade Mark). In such cases, the pharmacist usually provides the generic drug, which is cheaper.
This approach collides directly with the situation described above in which a drug has three indications, two of them of public domain and a third one being Patent protected, risking that the generic drug is the one provided by the pharmacist both for the indications that are public domain and the Patent protected indication.
SOLUTION: The judge has forced the NHS (National Health Service) to issue guidelines indicating doctors that in the present case they should proceed as follows:
• If the medical indication to be treated is neuropathic pain, pregabalin should only be prescribed under the Trade Mark name Lyrica® (marketed by the company Warner-Lambert), unless non-advisable due to medical contraindications or special medical needs. In such cases, neither Lyrica® nor pregabalin should prescribed.
• If the medical indication to be treated is not pain, prescription using the generic name pregabalin should continue.
Bill of new Spanish Patent Act.
Our Managing Partner Mr. Luis-Alfonso Durán was invited to appear last March 3, 2015 before the Spanish Parliament to inform about the bill of new Spanish Patent Act that is being under discussion. Mr. Durán was invited to make this report, in his capacity of Chair of the Intellectual Property Committee of CEOE (Spanish Industry Federation).
Protection of Morocco through European Patents
As from March 1, 2015, it will be possible to designate Morocco (MA) as an extension state of European patent applications.
After validation in Morocco a European patent will confer essentially the same protection as patents granted by the EPO for the now 38 member states of the European Patent Organisation.
Recognizing Durán-Corretjer, S.L.P. as leader in filing and prosecution of trademarks in Spain.
Durán-Corretjer, S.L.P. has been cited as leader in filing and prosecution of trademarks in Spain by the magazine World Trademark Review in his analysis of the World’s Leading Trademark Professionals.
The owner of an earlier trade mark may sue the owner of a later registered trade mark without the need to previously invalidate it.
A recent Decision of the Spanish Supreme Court has declared that the owner of an earlier Spanish trade mark which is confusingly similar to a later trade mark, also registered, may sue the owner of the latter, if the trade mark is in use, without the need to previously invalidate said trade mark. This decision is consistent with the criterion that is being applied to community trade marks.
Powers of attorney for Patent applications and validation of European Patents in Spain
The Spanish Patent and Trade Mark Office (OEPM) has recently issued a communication to the Spanish Association of Industrial Property Attorneys who requested a clarification about the rumours of a new practice relating the powers of attorney for Spanish Patent applications and validations of European Patents in Spain.
OEPM, recognizing the fact that Articles 17-1 and 64 of the Implementing Regulation of the Spanish Patent Law require the filing of a power of attorney by a representative in any patent activities before the Spanish Patent and Trade Mark Office, and notwithstanding that these articles of the Implementing Regulation have not been amended, makes the interpretation that, due to the fact that Spain has signed the PLT, and taking into account that Spain waived in 2009 the need to file a power of attorney for PCT filings, extends said waiving to national patent cases on grounds of Article 2.1 of PLT.
As it is known, Article 7 of PLT indicates that a contracting party may request a power of attorney to representatives, so, in our view, a waiving of this requirement requires an amendment of the Implementing Regulation of the Spanish Patent Law, and not a simple interpretation of the Spanish Patent and Trade Mark Office.
Therefore, it is doubtful whether this waiver of powers of attorney has a legal support.
Furthermore, the filing of a power of attorney, even if not required by OEPM, might have a positive impact in the interpretation to be given to the duty of confidentiality imposed to Spanish Patent Attorneys by the law and may reinforce privilege attorney-client communications.
In conclusion, even if OEPM does not currently require the filing of powers of attorney for Spanish Patent cases, we advise to continue filing them voluntarily.
Powers of attorney can be individual (only for one case) or general (that would serve for an unlimited number of cases of the same applicant). They can be filed in original or as scanned signed copies.
Notwithstanding the above, if our clients and associates prefer not to file powers of attorney for the above Patent cases, we will be proceeding accordingly.
NEW PATENT AND TRADE MARK ATTORNEYS IN OUR FIRM
We are pleased to inform you that four associates of our firm have successfully passed the examinations and have qualified to become chartered Patent and Trade Mark Attorneys.
The new Attorneys are the following, in alphabetical order :
Christian Durán
César Lasanta
Alfredo Llamas
Ada Torras
Incidentally, the qualification for Patent and Trade Mark Attorney is a rather tough assignment in Spain and in the present case, only 17% of the candidates have succeeded in being accepted. We hope that this circumstance will evidence the high proficiency of these associates.
These four new Patent and Trade Mark Attorneys will be a reinforcement to the professional staff of our firm and we expect that their contribution will allow us to maintain and increase our commitment for a high quality work to be offered to our clients and associates.
EUROPEAN PATENT DIVISIONAL APPLICATIONS. THE TWO YEAR TIME LIMIT WILL BE OVER AS FROM APRIL 1ST, 2014
The Administrative Council of the European Patent Office decided on October 16th, 2013 to amend Rules 36, 38 and 135 and to give away the existing time limits to file divisional applications of European patent applications.
Under the current system, it is possible to file a divisional application relating to any pending European patent application provided that the divisional is filed within two years from the first examination report, or from when the Examining Division first has objected a lack of unity of invention.
Under the new provisions, that will come into force on April 1st, 2014, divisional applications could be filed at any time while the European Patent application is pending.
The new Rules will apply to any divisional application filed on or after April 1st, 2014 even in those cases where the earlier two year term has already expired.
The new rules will establish an additional filing fee for any divisional application filed as from April 1st, 2014. The amount of this fee is not yet known but it is provided that its amount will grow with each subsequent generation of divisional applications.
At the light of those changes our recommendation to our clients with pending applications is that:
1.- Since the new rules will reopen the possibility to file divisionals on cases which, under the present regime, the term has already expired, it might be advisable to delay the grant of any pending European Patent application on which divisionals would have to be filed until April 1st, 2014.
2.- In order to avoid having to pay the additional fee for second or later generations of divisionals, it is advisable to file any divisionals before April 1st, 2014, if the two year term to do it under the current regime has not yet elapsed.
SEMINAR ON THE NEW US PATENTS ACT (AMERICA INVENTS ACT) AND ITS COMPARISON WITH THE EUROPEAN SYSTEM
The Industrial Property firm Durán-Corretjer organizes, in collaboration with the American firm Ratner Prestia, a Seminar on the new U.S. patents act (America invents act) and its comparison with the European system, to be held on October 28, 2013 from 9:00 to 13:30, and will be presented by the U.S. General Consul in Barcelona, according to the following program, which will be held in Room B of the Foment del Treball Nacional building located at Via Laietana 32-34 in 080003 Barcelona.
Registration is free, but is indispensable to attend the seminar, given the access control systems of the venue where the event will take place.
Seminar Language: English.
To register click on this link.
LANDMARK PATENT INFRINGEMENT DECISION BEFORE THE U.S. INTERNATIONAL TRADE COMMISSION (ITC) IN A CASE REPRESENTED BY DURAN-CORRETJER.
ITC has dismissed the complaint filed by a patentee against thirteen defendants finding that the complainant had not satisfied its burden of meeting the ITC’s domestic industry requirement.
This decision that involved one of our clients as a defendant represents a substantial victory for the 13 defendants and it is the first in an ITC investigation held under the ITC new pilot program for expedited resolution, and demonstrates the value of effective case analysis, and definition and implementation of appropriate strategies.