INFORMATION FROM THE EPO
Notice from the European Patent Office dated 8 March 2007 concerning the direct applicability of Article 70(7) of the TRIPS Agreement in Spain to European patent applications filed prior to the expiry of the reservation entered by Spain under Article 167 EPC
1. Reservations entered by the Hellenic Republic and Spain
Upon joining the European Patent Organisation, the Hellenic Republic entered a reservation pursuant to Article 167(2)(a) EPC, providing that European patents would be ineffective in Greece insofar as they conferred protection on pharmaceutical products as such.
Likewise, the Kingdom of Spain entered a reservation under Article 167(2)(a) EPC, by virtue of which European patents were ineffective in Spain in so far as they conferred protection on chemical or pharmaceutical products as such.
In the wake of arrangements agreed in particular between the Registro de la Propiedad Industrial, as it then was, and the European Patent Office, with regard to validation procedures in Spain, the European Patent Office published a Notice dated 13 May 1992 concerning the reservations1, which advised applicants to submit a separate set of claims when filing a European patent application designating Spain or Greece and containing claims related to chemical or pharmaceutical products as such falling under the reservations in force in those contracting states. These reservations expired on 8 October 1992, but applied to all applications having a filing date prior to their expiry.
2. Direct applicability of TRIPS Article 70(7) in Spain
The TRIPS Agreement entered into force in Spain on 1 January 1996. On 9 December 2005, the Madrid Court of First Instance No. 72 held inter alia that Article 70(7) of the TRIPS Agreement was directly applicable in Spain. TRIPS Article 70(7) provides that applications still pending at the date of application of the TRIPS Agreement for the Member in question shall be permitted to be amended to claim any enhanced protection provided for under the Agreement.
3. Effect on pending applications affected by the reservation in Spain
Thus, where an applicant has filed a European patent application prior to 8 October 1992, provided the application is still pending, he must be given the opportunity to amend his application so as to obtain the enhanced protection available under the TRIPS Agreement, in particular under Article 27(1) TRIPS, which provides that patents shall be available for any inventions, whether products or processes, without discrimination as to the field of technology.
This may be the case in particular with regard to divisional applications as these are deemed to have the same filing date as the parent application and may thus still be both pending and deemed to have been filed under the reservation. Moreover, applications may have been the object of an appeal or been suspended during the procedure prior to grant and may thus also still be pending.
4. Consequences for the procedure before the European Patent Office
As a result of the decision mentioned above, the recommendation contained in the Notice of the European Patent Office dated 13 May 1992 is no longer applicable as far as Spain is concerned. Where an applicant has submitted a separate set of claims for Spain, this set may be withdrawn, allowing the applicant to claim and obtain protection in Spain for chemical and pharmaceutical products per se.
Should he, for whatever reason, choose not to withdraw this separate set of claims, the European patent application would then accordingly proceed to grant with a separate set of claims for Spain, and there would be no protection for the chemical or pharmaceutical products as such in Spain.
5. Situation in the Hellenic Republic
The European Patent Office has not been notified of any similar developments in the Hellenic Republic. Therefore, it is to be assumed that the Notice of the European Patent Office dated 13 May 1992 continues to remain applicable to pending applications containing a separate set of claims for Greece filed as a result of the reservation entered by the Hellenic Republic.
2 See the decision of the Madrid Court of First Instance No. 7 dated 9 December 2005 in Ratiopharm España S.A. v. Warner-Lambert Company, confirmed on this point by the Decision of the Provincial Court of Madrid, Section 28, Judgment No. 147, on 26 October 2006.
" [...] The above mentioned provisions [Articles 27 and 70 (7)] of the TRIPS Agreement, are directly applicable in Spain from the date of entry into force of the Agreement, as from its ratification it binds the State in its application, and the examined matter has direct effect, as it fulfils the criteria set forth by the Court of Justice of the European Communities by laying down a clear and precise obligation, without ambiguity, and a complete mandate leaving no room for discretionary appreciation, without requiring national executive provisions [...]"