Revising European patent translations: further developments

A previous article ("Recent trends in the revision of European patent translations") referred to four Supreme Court judgments which dealt with the possibility of revising European patent translations originally applied for before the entry into force of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) by adding product claims.

Given the Spanish Patent and Trademark Office's refusal to amend these claims, the issue was brought before the Contentious Administrative Chamber of the Supreme Court. The Supreme Court considered the revision of the translation to be an appropriate way to incorporate product claims which were banned in Spain before the entry into force of TRIPs.

Now it appears that this option is not so clear in cases where holders of chemical-pharmaceutical European patents applied for a double set of claims (product claims and process claims) for countries which, like Spain, excluded the patentability of chemical-pharmaceutical products.

Recent Decision 130/12 of the Barcelona Commercial Court No 4, although it is based only on a prima facie analysis (as it refers to the granting of interim injections and has been appealed), rejected the possibility for holders of pharmaceutical-chemical European patents which submitted a specific set of process claims for Spain to invoke any product claims added by means of translation revision.

According to this decision, even though Article 70.3 of TRIPs provides that any state can deem authentic a translation submitted in an official language of that state, this is possible only in the event that the translation confers a narrower protection than that conferred by the original text.

Thus, if the patentee, by means of the revised translation, extends to Spain the claims initially granted for those member states which, at the time of filing the European patent, did not exclude patentability for chemical-pharmaceutical products, the European patent submitted in the language of translation (Spanish) would confer a broader protection than that submitted in the language of the proceedings (English). According to the Barcelona court, this leads to an unsurpassable discrepancy between the text providing the content of the patent and the translation.

Barcelona Commercial Court No 4 considered that the earlier decisions of the Contentious Administrative Chamber of the Supreme Court focused only on the issue of publication of the revised translation, rejecting the argument that denial of publication could have been based on the Spanish reservation to patentability of pharmaceutical products. According to the court, the issue at hand was whether the revised claims corresponded to the claims specifically granted for Spain. 

Therefore, the court considered that the Spanish translation of the claims had a broader scope of protection than the original set of claims, and dismissed the preliminary injunctions requested by the patentee.

If the thesis put forward by the Barcelona court is upheld, the only possibility of invoking product claims which have been added by means of translation revision of a European patent may be in those cases where the patentee did not file a specific set of claims for Spain, but rather excluded from the original Spanish translation the product claims. Requesting from the European Patent Office (EPO) the extension of the Spanish set of claims does not appear to be a solution for patent owners because the EPO has rejected this possibility on the basis of Article 123.3 of the European Patent Convention.