On November 4, 2010, Spanish Supreme Court has granted three appeals filed by Pfizer and Warner-Lambert regarding denial of modification of translations of three of their European Patents.
According to the Spanish reservation for product protection provided for in Article 167, paragraph 2(a) of the European Patent Convention, pharmaceutical products couldn't be patented in Spain until 7 October 1992. Up to that date pharmaceutical European Patents designating Spain where translated into Spanish making reference to processes and avoiding references to products.
After that date, plaintiffs filed request for modification of the translation at the Spanish Patent and Trademark Office, in order to include products claimed in their European Patents. Modification was rejected and both companies appealed.
Spanish Supreme Court has now granted the appeals arguing that the owner may purposely reduce the extension of a European Patent through translation. As pointed in the rulings, this would not only be the case of application of reservations made according to Art. 167.2, but also those limitations intentionally made by the owner according to agreements with other companies or to economic or commercial reasons. Since those reasons may disappear, the SSP states that the owner should be entitled to request any time a modification of the translation in order to obtain full protection of the European Patent in Spain.
Patents involved are:
.- Pfizer's EP0463756, filed on 7 June 1991 - Text of the ruling (Spanish) here.
.- Pfizer's EP0440372, filed on 24 January 1991 - Text of the ruling (Spanish) here.
.- Warner-Lambert's EP0247633, filed on 29 May 1987 - Text of the ruling (Spanish) here.
Tuesday, 4 January 2011
Spain: Modification of EP translations
Professional practice mainly focused on IP and Competition Law. General advising, judicial and extrajudicial defence (including the coordination of litigations in several jurisdictions) in relation to patents, marks, designs, domain names, e-commerce, as well as commercial contracts.