The Superior Justice Court of Madrid has recently handed down two sentences confirming the legality of conduct of the SPTO as it rejected the way for revising European patent translations for adding claims against unprotected chemo-pharmaceutical products like those in Spain , once they were granted.

Both sentences -dated March 26 of this year- reject contentious administrative appeals filed on October 27, 2006, as ruled in the appeal process. In it, the SPTO annulled the publication as a “revision of European patent translations” of a new text to which were added claims against chemo-pharmaceutical products that hadn't been included in the set of claims granted and validated for Spain, by corresponding to patents which, having been applied for before the expiration of reservations formulated by our country upon adhering to the European Patent Convention (EPC), had been granted before the date of application of TRIPS in our country.

The court confirmed the actions of the SPTO in two ways: firstly, it validates the jurisdictional capacity of the SPTO for denying the publication of this revision when, as had happened in these cases, it didn't concern authentic translations; and secondly, it maintains SPTO criteria when rejecting that the mechanism for the “revision of translations” as stated by the EPC and in article 12 of RD 2424/1986 dated October 10, for correcting insufficiencies or translation errors with the aim of “adjusting the translated text to the original when its content must ideally coincide,” is used to enlarge the patent's scope of protection to product claims which, when TRIPS came into force, were not protected in Spain, nor did they correspond to applications that were pending concession on this date.

Additionally, and within the framework of the civil jurisdictional order, the Regional Court of Madrid, in a sentence dated April 22, 2009, deemed appropriate the appeal against the sentence of October 19, 2007 passed by the judge of mercantile court number 6 in Madrid that had decreed the before-mentioned resolution of the SPTO void of rights, based on the understanding that the SPTO lacked the jurisdictional capacity for carrying out controls on revising the content of European patent translations. The Sentence of the Regional Court of Madrid rejects that the resolution of the SPTO dated October 27, 2006 “which is being tried for contested administrative jurisdiction” shall, in this case, be annulled under prejudicial condition based on the civil jurisdictional order and consequently revokes the sentence petition.