ROS Roca S.A. v. Envac Centralsug Aktiebolag, Supreme Court, Barcelona, Spain, 17 October 2012, Case No. 431/2012, with thanks to Luis Fernández-Novoa and Álvaro Velázquez, Hoyng Monegier, for sending in the judgment and a summary in English
"The Spanish Supreme Court decided on a much debated point of Patent Law in Spain which had been subject to controversial decisions in the past and which the Supreme Court has now finally settled, which is the date on which European Patents shall be considered as effective in Spain.
"In the first instance decision by Commercial Court No. 3, which had granted the complaint for infringement of a waste management process patent filed by ENVAC against ROS ROCA and dismissed the counterclaim for invalidity filed by the latter, the Court had stated that the date from which damages (to be compensated according to the hypothetical royalties fee – which resulted in one of the biggest compensations ever granted by Patent Courts in Spain) should be starting to accrue is the date of the filing of the translation into Spanish of the European Patent before the Spanish Patent Office, in accordance with the provisions set by the Spanish Royal Decree implementing article 65 of the EPC (filing of a translation within 3 months after publication of the grant by the European Bulletin).
"The Court of Appeals Barcelona, who upheld the decision of Commercial Court, however, granted partially the appeal filed by ROS ROCA and delayed the date of effectiveness of the European Patent until a later date, corresponding to the date in which the Spanish Patent Office actually published the translation into Spanish (which happened 4 months later). This delay was indeed very important in the case at stake since in the lapse of time the defendant had already been granted many contracts by several Spanish Municipalities for designing and building several waste management projects using the patented process and which defendant subsequently left outside of the calculation of the royalties due.
"This decision of the Court of Appeals of Barcelona has been subsequently cited many times by lower Courts and Courts of Appeals to determine the date of effectiveness of European Patents in Spain.
"The Cassation Appeal against the Decision of the Court of Appeals of Barcelona was based on the breach of Art. 64 of the European Patent Convention and the provision of the Spanish Civil Code relating to the effects of International Treaties, setting out clearly what were the different implications of the wrong interpretation of the provisions of the EPC and the Spanish Royal Decree implementing it.
"The Supreme Court granted the Cassation Appeal and revoked the Decision of the Court of Appeals of Barcelona, stating very clearly that the Spanish Law cannot derogate from the provisions of the EPC establishing the date of effectiveness of European Patents at the date of publication of the mention of the grant in the European Bulletin and that the facultative provisions of article 65 only entitled Contracting States to set up a negative condictio juris with no suspensive but resolutory effect."
Read the decision (in Spanish) here.