Upfront loaded patent proceedings in Spain: strict need of timely translations. Brief comment on the Supreme Court Judgment 20 October 2023
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Of counsel
Spain
I am a Of Counsel in Bird & Bird's Intellectual Property department in the Madrid office.
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In a patent litigation case between Smart Trike Mnf Pte Ltd (a US American company) and Fábricas Agrupadas de Muñecas de Onil, SA (FAMOSA, the most well-known dolls manufacturer in Spain), the Civil Chamber of the Spanish Supreme Court in a 20 October 2023 decision has confirmed the need of filing Spanish translations of documents drafted in a foreign language with the initial brief of an invalidity action or counterclaim. Otherwise, the prior art drafted in a foreign language used in the invalidity attack will be ignored. It is not possible to correct this lack of translation after the party has filed a reply to the invalidity claim or counterclaim.
Background
The case involved the infringement of a patent on toddlers’ tricycles held by the claimant. The defendant, FAMOSA, denied infringement and filed a counterclaim of invalidity of the patent based on prior art documents drafted in German and French. However, the defendant did not file the Spanish translation of those prior art documents in its counterclaim or together with the Expert Report. The patentee answered the invalidity counterclaim and alleged that there was no translation of the prior art documents, so they were not able to properly defend their patent. In the preliminary hearing (a hearing intended for the preparation of the trial in which the evidence is admitted or rejected), the first instance Court refused the provision of the missing translations. This decision was subsequently confirmed by the Appeal Court and then by the Supreme Court.
Another aspect of the judgment refers to the difficulties in succeeding in a cassation appeal when the appellant is attacking the equivalent interpretation of the appealed decision. In the present case, the Civil Chamber of the Supreme Court confirmed its consideration that this is a question of fact, which in principle would be excluded from cassation. The only case in which the Supreme Court corrected the interpretation of the Appeal Court on equivalents infringement was in a 3 July 2019 judgment (Danstar/Lallemand v. Agrovin) [1].
Key takeaways
The main conclusion of this judgment is that the parties must be very diligent in the submission of documents including translations. On some occasions, it is not possible to do so. For these cases, the party that cannot provide the documents or translations should announce the filing of translations and request the Court not to serve the brief to the counter party until the translations or relevant documents have been filed.
[1] Bird & Bird represented the appellant (the lead counsel was Beatriz Diaz de Escauriaza, now working in the industry).