New collaboration agreement between DGOJ and Autocontrol regarding the advertising of gambling activities & Decisions on patents of the Barcelona Court (2/2). Indirect Patent Infringement (II)

 On October 14, the Resolution of October 6, 2021 was published in the BOE by the General Directorate for the Regulation of Gambling (“DGOJ”) by means of which the Agreement with the Association for the Self-regulation of Commercial Communication is published ("Autocontrol") in matters of publicity, sponsorship and promotion of state-level gambling activities (the "Agreement").

The Agreement was born as a result of the powers held by both entities in accordance with Law 13/2011, of May 27, regulating gambling, as well as the principle of promoting self-regulation established by Directive 2005/29 / CE of the Parliament Council and Council, of 11 May 2005, on unfair commercial practices by companies in their relations with consumers in the internal market.

In this sense, the Convention establishes as its main objective the implementation of a framework for mutual cooperation between the DGOJ and Autocontrol, for which both bodies assume a list of commitments that we detail below and that are aimed at promoting said cooperation.

The commitments assumed by the DGOJ can be summarized as follows:

Possibility of requesting information from the DGOJ to Autocontrol: before starting any control procedure in matters of advertising, the DGOJ may request information about whether a certain advertising has obtained a positive report within the framework of a prior consultation or Copy Advice ® or if it has been subjected to an extrajudicial dispute resolution procedure within the Advertising Jury.

Possibility of requesting the DGOJ for Autocontrol to initiate -ex officio- the procedure before the Publicity Jury: before initiating any sanctioning procedure, the DGOJ may urge Autocontrol to process -exofficially- a certain advertisement before the Jury of the Advertising. Once processed, Autocontrol must notify the DGOJ of the result of its actions.

Presumption of good faith of the operators who have obtained a positive prior report from Autocontrol: within the framework of a sanctioning procedure, it will be understood that the operator who had submitted the positive prior consultation report issued by Autocontrol had acted in good faith.

Possibility of requesting the collaboration of the DGOJ to Autocontrol: the DGOJ may request the collaboration of Autocontrol in any matter related to the advertising activity and legality of the advertising messages.

The commitments assumed by Autocontrol are summarized in the following:

Generic information duty to the DGOJ: Autocontrol must keep the DGOJ informed of the resolutions adopted by the Publicity Jury regarding gambling;

Quarterly information to the DGOJ: Autocontrol must report quarterly to the DGOJ about its voluntary prior control activity (Copy Advice ®) in matters of gaming advertising;

Duty of attention to the requests received from the DGOJ: Autocontrol must attend to the requests made by the DGOJ in relation to the accreditation of the issuance and validity of Copy Advice ®;

Cooperation request to the DGOJ: Autocontrol may request the cooperation of the DGOJ to issue opinions, studies, projects and / or resolutions related to the advertising activity of gambling;

Duty to consult the public pronouncements of the DGOJ: Self-control must consult the public pronouncements of the DGOJ regarding the advertising of gambling activities prior to the publication of the resolutions issued by the Advertising Jury on related issues with them.

Both the DGOJ and Autocontrol may carry out as many dissemination, training or study actions as deemed appropriate.

Likewise, the Agreement provides for the constitution of a monitoring commission made up of two representatives from each of the entities whose objectives will be: (i) to ensure the correct development of the Agreement; (ii) promote the measures and actions necessary to fulfill common objectives; and (iii) propose modifications to the Agreement.

Finally, it is worth mentioning that the Agreement is expected to have an initial duration of 4 years from its registration in the state Electronic Registry of Cooperation Bodies and Instruments of the state public sector and may be extended by express addendum.

DECISION OF THE PROVINCIAL HEARING OF BARCELONA

The Judgment of the AP Barcelona analyzes these requirements, in the specific case.

1. Products may allow infringement.

The Hearing concludes that:

The kits and centrifuge of the demanded BIOREGENERATIVE SOLUTIONS allow to reproduce the method protected by the patent.

The purchasers, health professionals to whom the defendant's products are directed, do not have the right to exploit the patented method.

The defendant SOLUCIONES BIOREGENERATIVAS knew that plasma, properly treated, could give rise to a product such as that obtained with the patent procedure.

2. Products currently on the market. Was there an induction to the infringement?

Finally, the Judgment analyzes the key point, in cases like this one in which the products are on the market: Has there been an induction to the infringement?

The Audiencia of Barcelona considers that a product is on the market, in a common way, when it has some normal non-infringing use. He concludes that the kits and centrifuges:

They are currently on the market; and

They have other uses, as well, of the patented invention.

It deduces that the defendant SOLUCIONES BIOREGENERATIVAS did not incite or promote the infringement:

Any expert in the field could conclude that these products serve to reproduce the patent procedure.

Reporting this is not special information that the defendant SOLUCIONES BIOREGENERATIVAS makes available to the purchasers; therefore it does not incite patent infringement.

Consequently, the Hearing considers that there is no indirect infringement of the patent.