Spain: Supreme Court decision regarding European patents designating Spain and date of enforceability

25 February 2013

Beatriz Díaz de Escauriaza

On 11 July 2012 the Spanish Supreme Court (Civil Chamber, Section 1) issued an important decision regarding European patents designating Spain and the date on which these patents become enforceable in Spain.

Background of the Case

The case referred to the alleged infringement by the Spanish company Ros Roca S.A. of the Plaintiff’s patent EP1212246, which had been validated in Spain under the patent number ES2230124 entitled “a system and method for refuse collection”. The announcement that the patent would be granted by the EPO was published on 6 of October of 2004. The translation of the Patent into Spanish was filed at the Spanish Patents and Trademarks Office (SPTO) on 5 January 2005 and published on 1 May 2005.

The Plaintiff claimed infringement of their rights and, accordingly, asked for payment of the damages caused by the Defendant. To this end, the Plaintiff asked for payment of the “hypothetical royalty”, which should be calculated as 20% of the Defendant’s sales over the five years prior to the filing of the claim.

In its decision of 18 June 2007, the Commercial Court nº 3 of Barcelona found the patent to be infringed and ordered the Defendant to pay for the damages caused. These were to be calculated as of the date the Spanish translation was filed at the SPTO (5 January 2005).

Ros Roca S.A. appealed the Judgment and claimed that the damages could not be calculated as of the Spanish translation was filed but, rather, as of the date the translation was published by the SPTO.

The appeal was upheld by the Appeal Court of Barcelona (15th Section) in its Judgment of 26 October 2008, where the following was said:

European patents designating Spain are not effective if a translation into Spanish is not filed within the term of three months from the date on which the grant of the patent was published by the EPO (Sections 7, 8 and 9 of Royal Decree 2424/1986)

Translations are only published upon payment of the corresponding fee.

Since the Spanish Patents Act (SPA) establishes that national patents are only effective from the date of publication and European patents “work” as national patents, the date of effectiveness of a European patent validated in Spain is that of the date of publication of the translation.

As a result of the above, the Appeal Court of Barcelona established that the relevant date in terms of damages was 1 May 2005 and not 5 January 2005.

Supreme Court’s decision - Date of publication of the grant of the patent by the EPO

Upon appeal filed by the Plaintiff, the effectiveness of European patents validated within Spain was once again addressed by the Supreme Court in its Judgement of 11 July 2012 but the solution adopted was neither the one of the First Instance Court, nor the one of the Appeal Court.

According to the Supreme Court, no matter when the translation into Spanish has been filed or published by the applicant, the relevant date in terms of effectiveness is established in Section 64 of the European Patent Convention

In this regard our Higher Court established that the provision foreseen under Section 2.2 of the EPC –according to which “The European patent shall, in each of the Contracting States for which it is granted, have the effect of and be subject to the same conditions as a national patent granted by that State”- is not always applicable, since it also establishes that this is only possible when the Convention does not provide otherwise.

The provision established under Section 64.1 EPC is precisely one of the exceptions to take into account. And this Section is clear enough when saying that the rights conferred by the European patent are enforceable as of the date when the grant of the patent was published by the EPO.

The Court said that it is true that Section 65.1 EPC enables the Contracting states to prescribe that the proprietor of the patent shall supply to its central industrial property office a translation of the patent into an official language and that this translation shall be filed within the term of three months from the publication of the grant.

The Supreme Court continued saying that it is also true that Section 65.3. EPC may prescribe that in the event of a failure to observe these provisions, the European patent shall be deemed to be void ab initio in that State. In connection to this, Section 7 of the Spanish Royal Decree 2424/1986 establishes that the lack of translation shall mean a lack of effectiveness of the European patent in Spain.

However, the Supreme Court clearly explained that the wording of the above provisions cannot mean a change into the date of effectiveness as established in Section 64 EPC. The lack of filing of a translation might mean a cease in the effectiveness of the patent (as a condictio iuris) but cannot alter the effectiveness date.

Therefore, the relevant date in terms of damages should have been 6 October 2004. (The plaintiff, however, had only asked the Supreme Court to overturn the decision of the Appeal Court and, subsequently, to confirm the decision initially issued by the Court of first Instance. As a result of this, the Plaintiff was only entitled to claim damages as of 5 January 2005).


Although this Judgment cannot be considered “jurisprudence” yet (at least two Judgements from the Supreme Court deciding about an issue on the same legal grounds are needed to use this term), this decision has contributed to clarify an important question that, so far, had been answered in two different ways by two different Courts.

There have been other cases that have not been published where this issue has again been the subject of discussions between the parties. However, in these cases the Courts did not have to decide about this issue since the asserted patents were finally found invalid or not to be infringed.

We will therefore have to wait for another patent infringement case to reach the Supreme Court to see if the criteria established in the Judgment of 11 July 2012 remains being the same.

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