Upfront loaded patent proceedings in Spain: strict need of timely translations. Brief comment on the Supreme Court Judgment 20 October 2023

Published

Nov 16 2023

Written By

Manuel Lobato

Of counsel
Spain

I am a Of Counsel in Bird & Bird's Intellectual Property department in the Madrid office.

Practices

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…