Spain, at the time of its accession to the European Patent Convention, made a reservation to that Convention under Article 167.2a, which excluded chemical and pharmaceutical products from being patentable in Spain until 7 October 1992. Prior to that date, applicants of EP patents with product claims had to file a special set of process claims for the Spanish validations of those patents.
On 4 November 2010, the Administrative Chamber of the Spanish Supreme Court gave judgment in four cases, and admitted the insertion of new product claims in European Patents when done as a revision of the translation of those patents.
The facts of the four cases are essentially the same. The holders of several patents with process claims requested the insertion of new product claims in applications intended to amend the translation of the patents. The Spanish Patents and Trade Marks Office (SPTO) published the revision of the translation of those patents. Shortly afterwards and following an ex officio examination, the SPTO revoked these decisions, maintaining that the revision of the patents was unacceptable. At the same time as the decisions were revoked, several generic companies appealed the administrative act that ordered the publication of the revised translations. Finally, the SPTO issued a decision concerning all the patents involved, which stated that the introduction of product claims through a revision of the EP translation was not possible.
The SPTO decision was appealed at the Administrative Courts by at least two patentees in four different proceedings. The Administrative Court of First instance (Tribunal Superior de Justicia) decided against the patentees, however the decisions were subsequently overturned by the Supreme Court.
The main statements from the Supreme Court in these judgments are:
- It is possible to introduce new product claims in a patent granted as a process patent. This applies to all kind of patents, not only patents subject to the reservation under Article 167 EPC.
- The SPTO must verify the content of the EP’s translations (and revisions to the EP translation) to check its accuracy and, in case of EP translation’s revisions, it must also check whether or not the extensions of the corrected translation stay within the scope of the text of the EP. Once these requirements are examined, the SPTO is obliged to publish the corrected translation in the appropriate statutory manner.
- The reservation contained in Article 167 EPC must be interpreted in the sense that it does not have any effect after its expiration. In the case of Spain, this interpretation allows product claims for patents applied for before 7 October 1992.
- The entry into force of TRIPS (in Spain, 1 January 1996) meant that it was possible to admit pharmaceutical product claims in new patent applications in cases where it had not been previously possible.
- The administrative procedure foreseen in the Spanish regulation for amending a translation of the validation of a European Patent is a suitable procedure to file new product claims.
- According to the Supreme Court, neither Article 70 (4) EPC nor Article 12 Royal Decree 2424/1986, Implementation Regulation for EPC in Spain, clarifies the limits of the right to submit a corrected translation of an EP application or EP patent. According to the Supreme Court, the purpose of the amendment of translations is not limited to the correction of possible errors or inaccuracies of the translation.
- There is no time limit for filing revisions of EP translations and therefore it is possible to file new product claims in EP patents while the patent is in force.
One of the four judgments includes an explicit order to the SPTO to publish the revision of the translation.
There is a huge expectation amongst Spanish patent experts regarding the consequences of these Supreme Court decisions.
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