Recently the Superior Court of Justice of Madrid issued two judgments upholding the legality of the proceedings by the Spanish Patents and Trademark Office (Oficina española de patentes y marcas) to deny the review of translations of European Patents to add claims of chemical or pharmaceutical products for the Spanish validation of those European Patents. Spain used the reservation foreseen in Article 167 EPC to exclude product patent protection for chemical and pharmaceutical products until 7 October 1992. Did TRIPs trump the reservation to Article 167 EPC made by the Kingdom of Spain? Is this reservation (which expired in 7 October 1992) consistent with TRIPs obligations? These have been controversial issues that have been handled by Spanish court.

Both judgments – dated March 26 of this year – denied the application for judicial review requested against the resolution of 27 October 2006, by which the Board of Appeals of the Spanish Patents and Trademark office declared the invalidity of new product claims, which were applied for as new translations of the European Patent. The argument of the Spanish Patents and Trademark Office was that they were not real translations and even if the review of translations is possible, this would not include producing a new text with added new product patent claims not been previously included in the set of claims awarded and validated in Spain.

The court upheld the practice of the Spanish Patent Office. The Court considered that it was under the jurisdiction of the Spanish Patent Office to deny the publication of this review when, as occurred in these cases, they did not concern real translations (it was a kind of bypassing of the existing law). The Court affirmed the discretion of the Spanish Patent Office to reject that mechanism for the “review of translations” – according to the European Patent Convention and Article 12 of RD 2424/1986 of 10 October correcting insufficiencies or errors in translations with the objective of “adjusting translated text with the original, as their contents should ideally be identical” – as it was intended to increase the scope of protection of an originally filed process patent. As administrative courts are essentially a revisory jurisdiction (that is, they only analyse questions that have been discussed by the Public Administration), the Court decided not to analyse whether TRIPs will allow the addition of new claims per se.

Similarly but within the system of civil jurisdiction (as opposed to administrative) the Appellate Court of Madrid Judgment of 22 April 2009, revoked the decision of 17 October 2007 rendered by the Mercantile Court No. 6 of Madrid which had declared the nullity of a Spanish Patents and Trademark Office decision from 27 October 2006 (the same that was affected by the administrative court decisions). The court of first instance considered that the Spanish Patents and Trademark Office lacked the capacity to conduct a review of the contents of translation of European patents, so the patent with product claims was enforceable in Spain. This decision was rejected by the Appellate Court of Madrid, which confirmed the decision by the Spanish Patents and Trademark Office stating that any decision concerning translations by the competent administrative body (the Spanish Patent Office) cannot be overturned by a preliminary ruling of a civil court, and accordingly vacated the judgment of the court of first instance, deferring the matter to the administrative courts. The Court refused to pronounce a judgment on the application of TRIPs in this case.