The Supreme Court declares that damages for infringement of a European patent can be claimed from the date the mention of the grant of a patent is published in the European Patent Bulletin.

The plaintiff, the owner of a European patent, brought infringement proceedings before the commercial court number 3 of Barcelona in 2006, claiming, inter alia, that the defendant introduced on the market a pneumatic system for the collection of remains which would infringe its patent. The plaintiff also sought a compensation for damages, based on the hypothetical royalty that the defendant would have had to pay to the patentee to exploit the patent lawfully.

The claim was admitted in the first instance. The Court of Appeal of Barcelona confirmed this decision. Both courts granted the claim for damages and ordered the defendant to pay compensation to the plaintiff. However, they applied different criteria in order to determine the dies a quo, i.e. the day from which the European patent produced effects in Spain and, therefore, from which the infringement was committed and damages could be claimed, based on Article 7 and 9, respectively, of the Royal Decree 2424/1986 on the Application in Spain of Certain Aspects of the European Patent Convention (RD 2424). The first instance court held that the dies a quo was the date on which the Spanish translation of the patent was filed before the Spanish Patents and Trademark Office. The Court of Appeal, however, considered the day the translation was published in the Official Gazette of Industrial Property as the relevant date. In the Court of Appeal's opinion, the owner of a European patent designating Spain would be entitled to claim damages from that date[1] as it is the date from which the patent produces effects in Spain.

Both parties appealed against this decision before the Spanish Supreme Court. The court dismissed the defendant's appeal and admitted the plaintiff's appeal.

The plaintiff and patent holder had claimed that the decision was in breach of Article 64 of the European Patent Convention (EPC), according to which a European patent confers on its proprietor "from the date on which the mention of its grant is published in the European Patent Bulletin" the same rights as would be conferred by a national patent granted in that state.

The Supreme Court held that in accordance with Article 64 of the EPC the relevant date for the assessment of damages is the date on which the mention of the grant of the patent is published by the EPO.

This conclusion would not be altered by Article 65.1 of the EPC which entitles the Member States to require patentees to submit a translation of the patent within three months from the publication of the mention of the grant in the European Patent Bulletin or Article 65.3 and Article 7 of RD 2424 which provide that a patent will be considered void from its date of filing if the translation is not submitted on time. The role of these provisions was to "link the termination of enforceability [of the patent] to the failure of submitting the translation within the deadline" by imposing a negative legal requirement leading to the annulment of a patent. If the translation of the patent is not filed within three months from the publication of the mention of the grant in the European Patent Bulletin, the patent - enforceable until then - ceases to exist.

The decision of the Supreme Court is good news for patent owners who are now entitled to claim more damages for the infringement of their rights in Spain.