In a recent judgment, the Supreme Court clarifies the procedural practice for defendants to raise a patent limitation during invalidity proceedings. In this particular case, the invalidity related to addition of subject matter and lack of inventive step on the patent of the Tiotropium drug.
Background and summary of the case
The case was brought in 2012 by Laboratorios Liconsa S.A. (“Liconsa”) against Boehringer Ingelheim Pharma GmbH &Co (“Boehringer”) before the Barcelona Patent court.
Liconsa filed invalidity proceedings for revocation of Boehringer's patent EP 1.379.220 , validated in Spain under number ES 2.236.590 (“ES 590”), for lack of novelty and inventive step. Boehringer replied with a counterclaim, seeking judicial limitation of the contested patent under Article 138(3) of the European Patent Convention.
On 20 February 2017, Commercial Court no. 1 of Barcelona handed down judgment no. 30/2017 , by which it (i) substantially upheld Liconsa's claim declaring that the patent “lacks effect, with respect to the claims originally granted” and (ii) dismissed the counterclaim brought by Boehringer, on the grounds that the limited claims were “null and void and not admissible due to added matter”. Read more