The free movement of goods

March 26, 2024
Was an importer of medicinal products free to import goods from elsewhere in the EC, even if patent protection in the state of exportation was inadequate, but the patent owner had consented to the marketing of the product in that state?

The case concerned the parallel imports of patented pharmaceuticals, and the Spain and Portugal accession conditions.

A multi-national pharmaceutical manufacturer claimed that our client has infringed its United Kingdom patents for drugs marketed in the United Kingdom and elsewhere. The manufacturer complained that our client had imported these drugs from Spain and Portugal.

The manufacturer wished to prevent the importation of drugs for which it held patents because, although those products were marketed in Spain and Portugal, they were not patentable there.

Following submissions on behalf of the parties (and on behalf of other private parties) and on behalf the Commission of the European Communities and the Governments of the United Kingdom, Belgium, Greece, Spain and Italy, the European Court of Justice decided (consistently with its earlier case law) that a patent owner who consented to placing products on the market anywhere in the EC, even in a country where patent protection was inadequate, was not entitled to prevent parallel imports into other member states. The result was that our client could not be prevented from importing those products from Spain and Portugal.

Judgments and media

The decision of Jacob J in the Patents Court referring the case to the ECJ is reported at [1995] FSR 909.

For the judgment of the European Court of Justice, see Joined Cases C267/95 and C-268/95.

See also Merck v. Primecrown Ltd [1997] 1 CMLR 83; [1997] FSR 237.

For an insight into the judge’s decision at the time, see his own book, IP and Other Things: A Collection of Essays and Speeches, by Robin Jacob.

For a discussions on the relevance of the case to the exceptions and limits to patent protection, see Patent Law in Global Perspective edited by Professor Ruth L. Okediji, Professor Margo A. Bagley.

For academic discussion on the case and its place in the jurisprudence of the European Court of Justice in this area of law, see: 

The Present State of the Patent System in the European Union: As Compared with the Situation in the United States of America and Japan, by Joseph Straus.

Terrell on the Law of Patents by Thomas Terrell and Simon Thorley

Terrell on the Law of Patents, A. Bryan Baer, Journal of Intellectual property Law, University of Georgia

Pharmaceutical Medicine, Biotechnology and European Law, edited by Richard Goldberg, Julian Lonbay