At the national level, patent litigation in Spain is governed substantively by:
- the Patent Act (24/2015);
- the European Patent Convention (EPC); and
- at the general level, the Civil Procedure Act (1/2000).
The main bilateral and multilateral agreements applicable to patents in Spain are:
- the Paris Convention for the Protection of Industrial Property;
- the Patent Law Treaty;
- the Patent Cooperation Treaty;
- the EPC; and
- the Marrakesh Agreement Establishing the World Trade Organization and Annex 1C, Agreement on Trade-Related Aspects of Intellectual Property Rights.
For the time being, Spain is not a party to the European unitary patent system. Therefore, the Agreement on a Unified Patent Court does not apply in Spain. However, this does not mean that the system does not apply to Spanish citizens – including companies – which carry out activities within the territory of the European member states that are parties to the European unitary patent system.
The competent courts for interpreting and enforcing patent law in Spain are the commercial courts of certain cities, which are the capitals of the respective autonomous communities – in particular, the commercial courts of the cities of:
- A Coruña;
- Barcelona;
- Bilbao;
- Granada;
- Las Palmas;
- Madrid; and
- Valencia.
On appeal, one or more sections of the provincial court corresponding to the city in which such courts are located hear appeals lodged against final decisions of the commercial courts.
The specialisation of the commercial courts was introduced in 2004 through an amendment to the Organic Law of the Judiciary; and that of the courts of certain Spanish cities in IP matters through the Agreements of the Permanent Commission of the General Council of the Judiciary of 2 February 2017 and 18 October 2018.
Most patent infringement claims are filed before the Barcelona Commercial Courts.
In Spain, patent litigation is heard before the commercial courts that specialise in IP matters. These courts can hear cases involving both infringement and validity. The invalidity of the patent can be invoked as a defence in patent infringement proceedings. In this case, the issue of validity is assessed by the same court that is hearing the infringement case.
Patent disputes are heard and decided:
- by a sole judge at first instance; and
- by a panel of three magistrates in the appeal.
If the patent infringement occurs anywhere in the Spanish territory, the plaintiff can decide where to file the patent infringement action. If the infringement occurs in a specific place within the national territory, the plaintiff may choose between:
- the place where the infringement occurs; or
- the place of the defendant’s domicile.
In the case of invalidity, the action must be brought before the court corresponding to the place of the defendant’s domicile.
If the defendant is not domiciled in Spain or in the jurisdictions of one of the courts that specialise in IP matters, the defendant may choose the court where the action for infringement or patent nullity is to be brought.
The patent holder and any licensees whose licence has been duly registered in the Patent Register of the Spanish Patent and Trademark Office have standing to file suit for patent infringement.
Article 117 of the Patent Act establishes that, unless otherwise agreed, the holder of an exclusive licence may exercise in its own name all actions that are recognised to the patent holder against third parties which infringe its rights. However, the holder of a non-exclusive licence may not exercise these rights; it must rather obtain the authorisation of the patent holder in order to take legal action against possible infringers.
Article 79 of the Patent Act provides that rights to patent applications or patents that are not duly registered in the Patent Register may not be invoked against third parties.
Whenever acts of patent infringement are carried out in Spain, the person committing them may be sued for patent infringement regardless of whether it is a foreign entity with its residence or place of business outside Spain.
Yes, a single infringement action can be brought against multiple defendants.
The Civil Procedure Act allows a single infringement action to be brought against several parties simultaneously, provided that there is a nexus between the actions by reason of title or cause of action. It is understood that the title or cause of action is identical or connected when the actions are based on the same facts.
We can refer to three possible scenarios as examples:
- actions based on the same patent against several defendants on the grounds that their products infringe the patent on the same facts. In these cases, even though the products sued may be different, joinder of actions is accepted;
- actions based on the same patent against several defendants on the grounds that their products infringe the patent but on different facts. In these cases, joinder of actions is usually accepted, but there are no unanimous criteria among the Spanish courts; and
- actions based on several patents against different defendants, with different facts for each defendant and with each patent affecting a different defendant. In this case, the accumulation of actions should not be admitted.
Yes, according to Article 121 of the Patent Act, a third party can seek a declaration of non-infringement or invalidity in Spain.
Any interested party may bring an action against the patent holder for a declaration by the competent court that a particular act does not constitute an infringement of its patent. The action can be filed during the lifetime of the patent and for five years after the expiry date.
The interested party must, prior to filing the action, request the patent holder to make a statement on the enforceability of the patent against:
- the industrial exploitation that the applicant is carrying out on the Spanish territory; or
- the serious and effective preparations that it is making for that purpose.
If one month elapses from the date of the request without the patent holder making a decision, or if the applicant is not satisfied with the reply, it may bring a non-infringement action.
This action cannot be brought by a person that has been sued for infringement of the patent in question.
The application must be notified to all persons holding rights in the patent duly entered in the Patent Register, so that they may appear and take part in the proceedings. However, contractual licensees may not appear in the proceedings if their licensing contract so provides.
The action referred to in Article 121 of the Patent Act may be brought together with an action for a declaration of invalidity of the patent.
The infringement of a patent under the Patent Act can be direct or indirect.
The acts that constitute direct infringement of a patent are as follows:
- the manufacture, offer for sale, introduction into commerce or use of a product covered by the patent, or the import or possession thereof for any of the aforementioned purposes;
- the use of a process covered by the patent or the offer of such use, where the third party knows, or the circumstances make it evident, that the use of the process is prohibited, without the consent of the patent holder; and
- the offer for sale, introduction into commerce or use of a product directly obtained by the patented process, or the import or possession of such product for any of the aforementioned purposes.
Patent infringement can also be indirect, which is also known as contributory infringement. In this case, the supply or offering of means for putting the patented invention into practice, with regard to an essential element thereof, to persons not entitled to exploit it may constitute patent infringement wherever the third party knows or the circumstances make obvious that such means:
- are suitable for putting the invention into practice; and
- are intended for that purpose.
According to Article 68 of the Patent Act and Article 69 of the EPC, the scope of protection conferred by the patent or patent application will be determined by the claims; while the description and drawings will serve to interpret them. Once the scope of protection of the patent has been determined, the court will examine whether the contested work falls within the scope of protection of the patent. The Spanish courts have also applied and construed both articles in accordance with the Protocol of Interpretation of Article 69 of the EPC.
Yes, the Spanish courts apply the doctrine of equivalents. Article 68 of the Patent Act and Article 2 of the Protocol interpreting Article 69 of the EPC provide that in determining the scope of protection of a patent, due account must be taken of any element equivalent to an element contained in the claims.
Spanish courts often use the three-question test consolidated by the British Catnic and Improver judgments or the triple identity test of function/mode/result (for mechanical patents) to determine whether the challenged embodiment is equivalent for the purposes of determining whether there is patent infringement.
Liability for infringement of patent rights is of an objective nature. Therefore, the infringer is considered as such regardless of whether it acted wilfully. However, in some cases, the Patent Act conditions the liability for damages arising from the infringement on whether the infringer was aware of the existence of the patent. Thus, both the manufacturer and the importer will be liable for damages ‘in any case’ (ie, objectively), whether or not they were aware of the existence of the patent. On the other hand, all those that carry out any other act of exploitation of the object protected by the patent will be obliged to compensate the damages caused only if they have acted knowingly or with fault or negligence. The infringer will be deemed to have acted knowingly if it has been warned by the owner of the patent of the existence of the patent, suitably identified, and of the infringement thereof, with a request to cease the infringement.
As it will be explained in question 5.4, the plaintiff must provide all evidence of the infringement with the claim, without the possibility of reserving the right to provide it later during the proceedings.
If the plaintiff cannot obtain the evidence through the usual channels – either because it is not accessible to the public or because the third party it considers to be the infringer does not provide it – it may request the following assistance from the court:
- It may request an inspection procedure, known as a fact-finding proceeding, in order to ascertain activities carried out by a third party which may constitute infringement of the patent. This proceeding may only be ordered when, given the circumstances of the case:
-
- infringement of the patent can be presumed; and
- it is not possible to verify the infringement without resorting to the requested proceeding.
- In addition, other types of measures may be requested to obtain information on the possible infringer and the origin and distribution networks of the works, goods or services that infringe an IP or industrial property right – in particular:
-
- the names and addresses of producers, manufacturers, distributors, suppliers and providers of the goods and services, as well as of those who, for commercial purposes, have been in possession of the goods;
- the names and addresses of wholesalers and retailers to which the goods or services have been distributed;
- the quantities produced, manufactured, delivered, received or ordered; and
- the amounts paid for the goods or services in question and the models and technical characteristics of the goods.
Proceedings may also be requested for the production of banking, financial, commercial or customs documents produced at a certain time and which are presumed to be in the possession of the person who would be sued as responsible.
In Spain, preliminary injunctions may also be requested before obtaining a ruling on the merits (see question 5.5 on the requirements for obtaining preliminary injunctions).
Article 78 of the Patent Act provides that civil actions arising from the infringement of patent rights are limited to five years from the date on which they could have been brought.
In other words, once five years have elapsed since the infringement took place and the action could have been brought, the patent holder may not take action against the infringer. If the infringement is ongoing, the patent holder can sue the infringer for what has been done in the five years prior to the filing of the lawsuit, but not for acts of infringement committed before that time.
There is no obligation to notify the alleged infringer in advance before bringing a claim for infringement. However, if the alleged infringer does not manufacture or import the product in Spain, it will be liable for damages only if it has acted knowingly or with fault or negligence. The Patent Act provides that an infringer will be deemed to have acted knowingly if it was warned by the patent holder of the existence of the patent properly identified and of its infringement, with a request to cease and desist.
Article 399 of the Civil Procedure Act establishes that the claim must identify:
- the plaintiff and the defendant; and
- their respective domiciles or residences where they can be summoned.
In the claim, the facts and legal grounds must be numbered and set out separately; and the claim must state clearly and precisely what is being requested of the court. The application should state the court rulings sought, as well as the alternative applications made in the event that the main applications are rejected.
The claim must state:
- the facts in an orderly and clear manner so as to facilitate their admission or denial by the defendant when replying; and
- in the same order and clarity:
-
- the documents, means and instruments that are provided in relation to the facts on which the claims are based; and
- the assessments or reasoning on these that are considered appropriate shall be expressed.
Spanish law does not permit the presentation of facts, legal titles or means of evidence that could have been produced with the claim after it has been filed. The submission of documents, means of evidence and other instruments relating to the merits of the case will only be allowed in certain circumstances that are duly foreseen in the Civil Procedure Act.
The patent holder can also request preliminary injunctions before obtaining a ruling on the merits. To request preliminary injunctions, two requirements must be met:
- periculum in mora or danger in delay; and
- fumus boni iuris or presumption of good right.
Exceptionally, the patent holder may request preliminary injunctions ex parte where specific circumstances in relation to urgency are met.
In particular, the following preliminary injunctions may be requested to ensure the full effectiveness of any ruling that may eventually be handed down (this list is not exhaustive):
- cessation or prohibition of acts that could infringe the petitioner’s right, where there are reasonable indications to suppose the imminence of such acts;
- the withholding and deposit of the allegedly infringing goods and of means exclusively intended to produce them or to carry out the patented process;
- the securing of any compensation for damages and prejudice; and
- the appropriate registration annotations.
Ordinarily, preliminary injunctions should be requested together with the infringement action; although in exceptional cases, if certain circumstances are met, the request may be filed prior to filing of the main claim. In that case, if the preliminary injunctions are granted, the plaintiff must file the main claim within 20 working days. If the main claim is not filed within this deadline, the preliminary injunctions will be lifted.
In relation to costs, the losing party may be ordered to pay legal costs. The losing party is not obliged to pay everything that the winning party has paid, but criteria are established depending on factors such as:
- the economic value of the proceedings;
- the time spent; and
- the complexity of the case.
However, any party is obliged to secure legal costs.
In the following cases, a guarantee must be submitted to cover possible damages that the judicial action may cause to the other party:
- For a request for injunctive relief, the plaintiff must provide a bond which may be modified by the court if it agrees to grant the injunctive relief. Such preliminary injunctions will not be effective until the plaintiff provides a guarantee, such as a bank guarantee, for the amount fixed by the court. The purpose of this guarantee is to be able to respond promptly to any damages that the preliminary injunctions may cause to the defendant if they are lifted and damages are requested.
- For a request for preliminary or verification of facts proceedings (these are proceedings to obtain evidence – a sort of saisie description; see question 7.1), the applicant must also provide a bond to cover the damages that the proceedings may cause to the defendant. The defendant will have the right to request these damages if:
-
- the result of the proceedings is negative; or
- despite obtaining the requested evidence, the plaintiff does not file the corresponding claim within the corresponding time limit.
The parties bear the burden of proving the certainty of the facts that give legal effect to their respective claims. This requires the production of all documents and evidence necessary to convince the court and refute the arguments of the other party.
The law also provides that each party may request the other parties to produce documents which are not available to them and which relate to the subject matter of the proceedings or to the effectiveness of the evidence (Article 328 of the Civil Procedure Act). In matters of patent infringement committed on a commercial scale, this disclosure may extend, in particular, to banking, financial, commercial or customs documents produced within a certain period of time and which are presumed to be in the defendant’s possession. Such a request must be accompanied by prima facie evidence, which may consist in a sample of the infringing items, goods or products. At the request of any interested party, the court may decide to keep the proceedings confidential in order to ensure the protection of data and information of a confidential nature.
If the defendant refuses to produce the documents requested without reasonable grounds, the court may either:
- attribute evidentiary value to a copy; or
- issue an order to bring the requested documents to the proceedings if the nature of the documents and evidence produced so advise.
Article 330 of the Civil Procedure Act provides that non-disputing third parties will be required to produce documents in their possession only if:
- this is requested by one of the litigants; and
- the court considers that knowledge of such documents is of importance for the purposes of the judgment to be handed down.
The court will order the person who possesses the documents to be called in person, hear him or her and decide on the request, taking the necessary measures to protect the confidentiality of the information.
When a witness is under a duty of secrecy regarding the facts that he or she is being interrogated about, Article 371 of the Civil Procedure Act provides that the court will consider the grounds for the refusal to testify and will decide as appropriate.
The General Statute of the Spanish Legal Profession, approved by the government by Royal Decree 135/2021, provides that respect for professional secrecy is a guiding principle and a superior value of the practice of law in the Spanish territory. Articles 21 and 22 of the statute provide that:
- the principle of trust and confidentiality in relations with clients imposes on lawyers the duty and the right to keep secret all facts or news that they learn through their professional activity; and
- lawyers cannot be obliged to declare about such facts or news.
Professional secrecy includes all facts, communications, data, information, documents and proposals that a lawyer learns, issues or receives in his or her professional practice.
Under the attorney-client privilege recognised in Spanish law, conversations held by lawyers with their clients, with counterparties or their lawyers, in person or by any telephone or telematic means:
- may be recorded only with the prior warning and agreement of all those involved; and
- in any case, are covered by professional secrecy.
The duty of professional secrecy still applies once the service relationship with the client has ceased.
A lawyer can be released from his or her duty of confidentiality only if so expressly authorised by the client.
Apart from the evidence that the parties provide with their initial submissions, at the preliminary hearing:
- the parties will propose to the court any evidence deemed appropriate to prove the facts and allegations on which their claims are based; and
- the court will accept or reject such evidence depending on whether it is useful in evidencing the facts in dispute.
The court may require third parties – both public administrations and individuals – to provide documents in their possession. At the trial, the persons admitted for examination at the preliminary hearing (the parties, witnesses and experts who have given an expert opinion) will be cross-examined.
The Civil Procedure Act foresees in Articles 256 to 263 the possibility that preliminary proceedings in preparation for a trial are carried out so that the potential defendant :
- makes a statement;
- exhibits documents (eg, bank, financial, commercial and customs documents) and things (eg, samples of infringing specimens, goods or products); and/or
- informs on:
-
- potential infringers; and
- the origin and distribution networks of the infringing goods.
Articles 123 to 126 of the Patent Act also provide for a specific procedure in the form of the verification of facts, whereby the court, at the request of the patent owner and without prior notification of the affected party, with the intervention of the expert or experts appointed for this purpose, will appoint a court commission to go to the place where a patent may be infringed and determine whether, in view of the examination carried out, the alleged infringement may be taking place.
The main evidence in patent infringement litigation is:
- documentary evidence, which is generally provided with the initial statements; and
- expert evidence.
The interrogation of parties or witnesses and reports of private investigators may also be proposed.
Expert evidence is usually provided by the parties with their initial statements. The appointment of a court-appointed expert may be requested from the court, a;though this is not common in patent litigation. Parties prefer to rely on their own experts, who are required to:
- be objective and impartial; and
- take into consideration everything that may be prejudicial or favourable to the party that proposes the expert.
During the trial in the main proceedings or the hearing of preliminary injunctions, experts as well as witnesses and, where appropriate, the parties will be cross-examined.
In patent infringement matters, the rule is that of so-called ‘rogatory justice’, according to which the civil courts will decide cases based on the parties’ submissions of facts, evidence and/or claims, except where the law provides otherwise in special cases. This is established in Article 216 of the Civil Procedure Act.
Except in the aforementioned cases of preliminary proceedings to obtain evidence (a sort of saisie contrefaçon) and proceedings to establish facts (a sort of saisie description), the parties must provide the court with the evidence necessary to prove or refute the accusation of patent infringement.
Spain provides for a presumption in favour of the patent holder in cases where an action is brought for infringement of a process patent for obtaining a product that was new at the time the patent was applied for. In such case, Article 69.2 of the Patent Act provides that, in the absence of proof to the contrary, it is presumed that any product or substance with the same characteristics has been obtained through the patented process.
Article 217 of the Civil Procedure Act provides that:
- the plaintiff has the burden of proving the certainty of the facts from which, according to the applicable rules, the legal effect corresponding to the petitions of the claim and of the counterclaim may be inferred; and
- the defendant has the burden of proving the facts which, according to the applicable rules, prevent, extinguish or reinforce the legal effect of the facts set out in the complaint.
If, when giving judgment, the court considers the facts relevant to the decision to be uncertain, it will reject the claims of the plaintiff or of the defendant, depending on whether the onus is on the plaintiff or on the defendant to prove the facts which remain uncertain and which form the basis of the claims.
There is no specific procedure for construing claims during a patent infringement action. In their respective initial submissions:
- the parties propose how the claims should be construed, taking into account the description and the drawings, and assisted by a person skilled in the art who may act as technical expert; and
- the judge will decide in the final judgment what should be the proper interpretation of the scope of protection of the claims.
According to the applicable law, the extent of the protection of a patent will be determined by the claims, which will be interpreted taking into account the description and drawings (explained in question 4.2).
The Protocol on the Interpretation of Article 69 of the EPC is used by the Spanish courts to define the scope of protection of a claim. According to Article 1 of the protocol, the extent of the protection conferred by a European patent cannot be understood as that defined by the strict, literal meaning of the wording used in the claims, with the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims; nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent holder has contemplated. On the contrary, the protection conferred by a claim is to be interpreted as defining a position between these extremes, which combines fair protection for the patent holder with a reasonable degree of legal certainty for third parties.
When defining the protection conferred by the claims of a patent, the court will first consider the patent description and drawings, as well as documents that may help it to interpret what the expert’s common general knowledge was at the date of application or priority of the patent, in order to understand the context of the claimed elements beyond the definitions contained in the patent itself. In construing the claims, the court will read the reports of the experts and consider their depositions. Objections and explanations from both the Spanish Patent and Trademark Office and the applicant during the prosecution of the patent may also be relevant, but not necessarily decisive in the case.
An important aspect to be considered in judicial proceedings for both nullity and infringement of patents is the possibility for the patent holder to request that the court consider the validity of one or more limited sets of claims, either principally or subsidiarily to the defence of the patent as granted. The Patent Act contemplates this possibility as an option in Article 120. Together with the proposed set or sets of claims, the patent holder will have to justify the limitation proposed.
The proposed limitation of patent claims must be submitted to the patent court:
- with the defence in a nullity case; or
- with the reply to the objection of nullity that may be raised in infringement proceedings.
It cannot be proposed afterwards.
The typical defences available to a potential defendant in the Spanish jurisdiction are non-infringement or invalidity of the patent.
The Patent Act provides that the defendant in a patent infringement claim may allege, by way of counterclaim or defence, the total or partial invalidity of the plaintiff's patent.
Both the defence and the counterclaim must be raised in the statement of defence. If the petition of nullity is made by way of counterclaim, the plaintiff will be given a two-month timeframe to respond; and the petition of the counterclaiming defendant will be part of the subject matter of the litigation, which the judge will decide jointly in a judgment.
If nullity is raised by way of defence, the patent holder will have eight days from receipt of the response to the claim to request the judge to treat the defence as a counterclaim.
These aspects are regulated in Article 120 of the Patent Act and in the Civil Procedure Act.
The existence of an exception applicable to non-infringement prevents the patent from being used against an alleged infringer. Some of the exceptions contemplated in the Patent Act are:
- acts carried out privately and for non-commercial purposes;
- acts carried out for experimental purposes which relate to the subject matter of the patented invention;
- the Bolar clause;
- elements of means of transport that temporarily or accidentally enter Spain;
- exhaustion of the patent right;
- acts relating to biological materials obtained through the reproduction or multiplication of protected biological material that is the subject matter of the patent and that has been lawfully placed in Spain; and
- exploitation based on prior use.
These exceptions are provided for in Articles 61 to 63 of the Patent Act.
The Civil Procedure Act provides in Article 415 that once the parties have submitted their initial written pleadings, they will appear before the court for a preliminary hearing. The judge will ask whether the parties have reached an agreement or are willing to do so. If they are ready to settle immediately, they may withdraw the proceedings or ask the court to approve what they have agreed.
Optionally, it is also foreseen that the parties may, by mutual agreement, request the suspension of the settlement procedure in order to undergo mediation.
Finally, Article 136 of the Patent Act provides that the parties cannot avail of alternative dispute resolution in relation to compliance with patent prerequisites, maintenance and/or validity.
Article 19.4 of the Civil Procedure Act provides that the parties can always request a stay of the proceedings, which will be granted by the court provided that:
- it will not harm the general interest or third parties; and
- the period of the stay does not exceed 60 days.
It is not necessary to report the results of the settlement to the court. According to Article 19 of the Civil Procedure Act, the parties are entitled to dispose of the subject matter of the lawsuit and may:
- renounce to or withdraw from the lawsuit;
- consent to the lawsuit;
- submit to mediation or arbitration; or
- settle the subject matter of the lawsuit.
The parties may optionally seek a court settlement by requesting the court to approve an agreement or settlement that they have reached.
According to Article 137.1 of the Civil Procedure Act, court hearings are public and anyone can attend them. Nonetheless, Article 138 of the same act foresees that the examination of evidence, hearings and personal appearances whose purpose is to hear the parties before a decision is taken will be conducted behind closed doors under certain circumstances, including to protect the legitimate rights of the parties. The parties concerned must request and justify the adoption of such measures. Courts may also declare the confidentiality of all or part of the case file where such a measure is justified. In that case, judicial officers and court clerks will refuse to provide third parties with information and copies of pleadings and documents contained in the file of the case.
The Trade Secrets Act of 2019 introduced a procedural mechanism for restricting access to and the dissemination of information disclosed in a lawsuit to the parties to the proceedings themselves. The parties, their lawyers, court officials, witnesses, experts and any other persons will be obliged not to use or disclose information that may constitute a trade secret and that has been declared confidential ex officio or at the duly justified request of the party that discloses the information in the proceedings.
Civil litigation – applicable to both patent infringement and validity proceedings – is divided into three stages. First, the parties file their initial statements in the form of written and complete statements containing all arguments and evidence available to them at that time. On submission of the statement of claim and defence, the facts and arguments are fixed and the dispute is established; only facts that arise afterwards may be added (as explained in question 5.4). The judge then calls the parties to a pre-trial hearing at which the lawyers will discuss the preliminary procedural issues, such as:
- lack of legal standing;
- the need to call other defendants or co-plaintiffs;
- procedural deficiencies in filing the claim;
- res judicata; or
- lis pendens.
The judge will also:
- set out the issues in dispute;
- assess the evidence that each party considers relevant to support its respective allegations, to
- decide which evidence will be admitted or rejected; and
- set a date and time for the trial.
The trial (main hearing) is the last part of the litigation, at which the parties, witnesses and experts will be cross-examined. After the examination, the lawyers will present their final pleadings and the trial will be closed for judgment. In patent matters, this stage generally takes between one and three days.
A challenge to the validity of the patent is one of the possible defences available to the alleged infringer. It will be handled as an exception or a counterclaim in the same proceedings as infringement.
Typically, the duration of a patent infringement or patent validity lawsuit at first instance is:
- around 18 to 24 months in Barcelona or Valencia; and
- around 24 to 36 months in Madrid.
Appeals can take 8 to 15 months. If the case meets the requirements for filing an extraordinary appeal for cassation before the Supreme Court, the appeal can take three to four years.
If the defendant requests the nullity of the patent and the patent holder decides to limit the scope of the patent, the proceedings may be extended by an additional six months.
Foreign decisions are pieces of evidence that may enlighten the Spanish courts with respect to the opinions of other courts. Nevertheless, the Spanish court will be guided in its decision by the evidence submitted in the domestic proceedings. In this regard, in a 29 April 2015 judgment in a patent case, the Supreme Court emphasised that a cassation appeal cannot be based on the fact that there is a divergence between the findings of a Spanish court and a foreign court, but only on the grounds of infringement of the applicable law.
With regard to technical decisions of the European Patent Office, these are considered by the courts as qualified technical opinions relevant to a specific case and will be taken into account.
Article 71 of the Patent Act provides that a patent holder may request in particular the following remedies:
- the cessation of the infringing acts or their prohibition if they have not yet occurred;
- compensation for damage suffered;
- the seizure of objects produced or imported by infringing the patent, and of the means exclusively intended for such production or for carrying out the patented process;
- the attribution of ownership of the seized objects or means;
- the adoption of necessary measures to prevent further infringement of the patent; and
- exceptionally, publication of the judgment condemning the patent infringer by means of announcements and notifications to interested persons.
In Spanish patent law, damages are calculated on an objective basis in relation to the damage actually caused or the benefits obtained by the infringer. Punitive or enhanced damages are not foreseen under Spanish law and are in fact prohibited by the IP Rights Enforcement Directive (2004/48/EC). Recital 26 of the directive establishes that the aim of the directive is not to introduce an obligation to provide for punitive damages, but to allow for compensation based on an objective criterion while taking account of the expenses incurred by the rights holder, such as the costs of identification and research.
Apart from the objective elements for the determination of damages, which are detailed in question 12.3, Article 76 of the Patent Act provides that when calculating damages, the patent holder can also claim damages caused by the loss of prestige of the patented invention due to the infringement – in particular, as a consequence of:
- defective performance; or
- inadequate presentation of the invention on the market.
According to Article 74 of the Patent Act, the basis for the calculation of damages stipulated by the act comprises:
- the lost value suffered by the patent holder; and
- the lost profits caused to the patent holder due to the infringement of its rights.
Compensation for damages may include:
- lost value; and
- where appropriate, the investigation expenses incurred to obtain reasonable evidence of the commission of the infringement.
To determine lost profits, the Patent Act provides that the compensation can be calculated on the basis of either:
- the negative economic consequences – including:
-
- the profits that the patent holder would have obtained from working the patent had there been no competition from the infringing party; or
- the profits obtained by the infringing party as a result of the infringement; or
- a lump-sum amount comprising at least the royalties that the infringing party would have paid the patent holder in exchange for a licence to exploit the invention.
An appeal may be filed against first-instance judgments in all types of proceedings and against final orders (eg, preliminary injunctions). An appeal may be lodged, on the basis of the factual and legal grounds of the claims made before the court of first instance, for an order or judgment to be set aside and for another order or judgment to be given in favour of the appellant, on the basis of a re-examination of the proceedings before that court and in accordance with the evidence which, in the cases provided for in the Civil Procedure Act, is carried out before the appellate court.
The appeal will be heard by the provincial court that is territorially competent to hear appeals against decisions of the court that handed down the appealed decision. Exceptionally, and at the request of the parties or when evidence is produced in the appeal, the appellate court may summon the parties to a hearing to present their respective arguments.
According to Article 477 of the Civil Procedure Act, a cassation appeal can only be submitted on legal grounds and if the appealed judgment:
- opposes the case law of the Supreme Court;
- resolves points and issues on which there is contradictory case law of the provincial courts; or
- applies rules for which there is no case law of the Supreme Court.
The cassation appeal will be heard by the Supreme Court.
The average time to decide an appeal will vary depending on the appellate court and its workload. Generally, the average resolution time is around:
- 6 to 12 months for appeals against interim rulings, such as preliminary injunctions; and
- 10 to 18 months for appeals against judgments.
Admission of an appeal to the Supreme Court against a second-instance judgment takes approximately 18 months; and in case of admission of a cassation appeal, a final judgment may take between three and four years from the date of the judgment on appeal.
As provided in Articles 394 and 398 of the Civil Procedure Act, the court may award attorneys’ fees in favour of the winner of the proceedings at each instance (ie, first, second and cassation). These legal fees can only be petitioned once the judgment cannot be further appealed (res judicata).
If this is granted in the judgment and requested by the winning party, the court at each instance will conduct a case-by-case analysis to determine the total amount of legal fees to be paid. The legal fees are not the actual costs of the parties’ attorneys, but rather statutory fees. The criteria applied by the courts to determine attorneys’ fees, as stated by the Supreme Court, are:
- the total cost of the proceedings;
- the degree of complexity of the matter in question;
- the stage of the proceedings (ie, first or second instance or cassation);
- the length and development of the writs, taking into account the dedication, effort and analysis required in the particular case; and
- the participation of other professionals in the trial.
Usually in patent cases, the winning party recovers just part of its attorneys’ fees. This is because patent cases are usually considered as cases without an established value and thus have limited recovery costs.
Spanish law provides that attorneys’ fees will be freely agreed between the client and its lawyers, respecting the rules on:
- professional conduct; and
- the defence of competition and unfair competition.
As a general rule, lawyers are entitled to remuneration for their services, as well as to reimbursement of expenses incurred (Articles 25 and 26 of the General Statute of the Spanish Bar). Within these limits, part of the fee may be agreed as a contingency fee.
Third-party litigation funding is not prohibited in Spain. In any event, this will be a private agreement between the funding entity and the party that enters into it, and as such cannot replace the liability of the litigant in the proceedings.
Patent litigation has become increasingly sophisticated in recent years, in the sense that it involves more technically and legally elaborate narratives. The interrelation with other proceedings being heard in other countries makes it necessary to continually review approaches as each proceeding progresses.
Issues which the courts could potentially address in the coming months include:
- plausibility;
- the effect of preventive briefs (known in other countries as protective letters) on preliminary injunctions;
- the role of divisional applications; and
- the influence of the unitary patent and proceedings before the Unified Patent Court (of which Spain is not part).
In relation to regulation, no legislative reforms are expected in Spain in the next 12 months.
Our recommendation to parties facing patent litigation in Spain is to ensure the sufficiency of their arguments before starting court proceedings, as it is important that the initial written statements contain all allegations and evidence that may be brought in the litigation; it will be very difficult to submit these later on.
It is also important to prepare expert evidence well in advance. Particular care should be taken in relation to:
- the ability of the person who will provide the expert opinion to present the arguments and to be cross-examined; and
- the consistency of his or her written opinion with other opinions that may be used in other territories.
Another challenge that has emerged in recent years is the possibility that different narratives may be put forward in opposition and appeal proceedings before the European Patent Office on the one hand and in court proceedings on the other. In particular, a plaintiff should consider the strategy if the validity of the patent is challenged in court proceedings and the need to file a limited version of the patent claims.
Finally, the choice of court is another important decision. Patent infringement proceedings are commonly brought before the courts in Barcelona, due not only to their knowledge of patent matters, but also to their more agile and efficient functioning, which provides confidence in a more predictable and timely process.
As a general rule, time is of the essence in litigation in Spain; as a result, the case should be prepared well in advance in order to decide on the best strategy in relation to the client’s commercial interests.