It has been some months since the Supreme Court’s Order of 24 April 2024, which decided in relation to two questions of jurisdictional competence. This link provides access to the decision.
The facts of the case that led to the Supreme Court’s decision were as follows:
- The Judgment of Barcelona Commercial Court No. 4 8/2024 of 15 January upheld the revocation claim of the company Teva and declared the Spanish part of the European patent EP 1 427 415 (“EP’415”) of Bristol-Myers Squibb (“BMS”) and the Supplementary Protection Certificate on the active ingredient apixaban (“SPC”) null and void. Apixaban is an important medicine of the anticoagulant group marketed by BMS under the brand name Eliquis®.
- By order of Madrid Commercial Court No. 13 of 12 February 2024, injunctive reliefs were granted ex parte under the EP’415 patent and its SPC against the company Sandoz. These injunctions were extended by order of the same court on 15 February 2024 against the companies Normon and Teva.
- However, previously, on 9 February 2024, Teva had filed a ‘preventive writ’ to avoid the grant ex parte of a potential request for injunctive relief, which was delivered to the Commercial Court No. 4 of Barcelona.
The ‘preventive writ’ is the formula adopted by the legislator to introduce into Spanish law the well-known ‘protective letters’, originated in Germany.
‘Preventive writs’ are regulated in Art. 132 of the Patent Act, which establishes that once they have been filed “the Judge or Court shall order the formation of a procedure for precautionary measures which it shall notify to the patent owner” and that “holder who considers that the Judge or Court before which the preventive writ was filed is not the competent one, may file its request for precautionary measures before the one it considers to be really competent” (free translation).
The question then was whether, according to the facts of the case, Teva could be sued before the Madrid courts for infringement or whether it should be sued before the courts of the city of Barcelona, having filed, prior to the application for precautionary measures, a ‘preventive writ’ before the courts of Barcelona.
The Supreme Court ruled in favour of the jurisdiction of the Barcelona Court, stating that “the preventive writ, although it does not formally alter jurisdiction, de facto conditions the jurisdiction for filing the precautionary measures, since these must be filed before the potentially competent judge or court chosen by the applicant for the preventive writ (and which may not be the one that the future plaintiff would have chosen, had he been able to do so). The only alternative open to the patentee is to justify that the court chosen by the applicant for a protective order is not the competent court. The automatic and imperative notification of the order of admission of the protective writ to the patentee prior to the filing of his application for interim measures is intended to fix and underpin the jurisdiction to hear future interim measures” (emphasis added and free translation).
The Supreme Court does not consider the knowledge of the existence of the ‘preliminary injunction’ by the patent holder to be relevant, as it understands that if the holder “had been aware of the existence of the preliminary injunctions by Teva and of their admission by the Barcelona Court […] it had to justify the lack of jurisdiction of the Barcelona court in order to assess its own jurisdiction. And if that knowledge was subsequent (always under the assumption that the pre-emptive writs were prior), the Madrid court had to assess its lack of jurisdiction and annul the extension of the precautionary measures” (emphasis added and free translation).
The Supreme Court therefore declared that the Madrid Court lacked functional jurisdiction to hear the precautionary measures against Teva, which led the Madrid Court to annul them.
On a different note, the Supreme Court’s decision also comments on the effects of a non-final judgment declaring a patent or SPC invalid, stating that “as long as it is not final, it does not prevent the patent holder from continuing to bring infringement actions (and consequently to seek injunctive relief ex parte) against entities other than the plaintiff, which are not parties [to the invalidity proceedings]” (emphasis added and free translation).
As can be seen, the Supreme Court’s decision will undoubtedly lead to a major rethinking of the procedural strategy to be followed by both patent owners and potential defendants in preliminary injunction and nullity proceedings.
Finally, it should be noted that the first instance judgment declaring the nullity of the EP’415 patent and its SPC has been overturned by the Barcelona Provincial Court (15th Section) 755/2024 of 18 July, which considers the patent to be valid. This ruling is not final as it has been appealed in cassation.