OJ EPO 2007, 439

1. Reservation entered by Spain

Upon joining the European Patent Organisation, the Kingdom of Spain entered a reservation under Article 167(2)(a) EPC, providing that European patents were ineffective in Spain in so far as they conferred protection on chemical or pharmaceutical products as such. At no time has the European Patent Office been notified that the reservation entered by Spain has been withdrawn.

2. Administration of the European granting procedure

The European Patent Office is solely responsible for the administration of the European patent granting procedure, which it conducts with impartiality, balancing the interests of applicants and third parties whilst bearing in mind the general public interest which it was created to serve.

The issue of whether the transitional provisions of the TRIPS Agreement are directly applicable in Spain is a national matter which must be resolved by the appropriate instances in that jurisdiction. It is not the intent of the European Patent Office to interfere in this matter. Neither the present notice nor the notice from the European Patent Office dated 8 March 2007 can be interpreted as espousing a position or emitting an opinion concerning the direct applicability of the TRIPS Agreement in Spain.

3. Withdrawal of the recommendation contained in the notice of the President of the European Patent Office dated 13 May 1992 as far as Spain is concerned

The attention of the European Patent Office was drawn to the necessity for the Office to examine the substance of the transitional provisions of Article 70 of the TRIPS Agreement of its own volition and strictly for the purposes of determining whether adjustments to the European Patent Office's practice of granting European patents are necessary, given the possibility that the TRIPS Agreement might ultimately be deemed to be directly applicable in Spain.

In light of this analysis, with regard to European patent applications still pending, the European Patent Office decided to withdraw the recommendation to applicants to file a separate set of claims in view of the reservation entered by Spain, which was contained in the notice of the President of the European Patent Office dated 13 May 1992.

4. Effect of the withdrawal of the recommendation contained in the 1992 notice

The following is the opinion of the European Patent Office as to the impact of the withdrawal of the recommendation contained in the notice of the President of the European Patent Office dated 13 May 1992 as far as Spain is concerned with regard to the European patent granting procedure.

The sole effect of this withdrawal is that the European Patent Office is no longer able to recommend maintaining a separate set of claims for European patent applications designating Spain, filed before 8 October 1992, containing claims covered by the reservation entered by Spain and still pending.

Should the applicant, 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, regardless of whether the transitional provisions of the TRIPS Agreement were ultimately found to be directly applicable in Spain or not.

Finally, it is emphasised that the notice from the European Patent Office dated 8 March 2007 is applicable only to European patent applications filed prior to 8 October 1992, the date of the expiry of the reservation entered by Spain, and still pending before the Office.

In the event of the TRIPS Agreement being found to be directly applicable, with regard to any patents already granted by the EPO, the Office has concluded that with regard to its opposition procedure, it does not need to review any of its existing practices. TRIPS Article 70(7) by definition only applies to pending applications and TRIPS Article 70(1) and (3) makes clear that there is no intention for the Agreement to have retroactive effect. In any event, any attempt post-grant to obtain enhanced protection provided for under the TRIPS Agreement in opposition proceedings would be prohibited by Article 123(3) EPC.