International Patent Litigation in Spain

A patent proprietor may bring patent infringement proceedings. If the patent is owned by more than one party, each of the co-owners may individually bring such proceedings (unless otherwise agreed) and that party must notify the other co-owners.

Unless agreed otherwise, an exclusive licensee may, on its own behalf, bring patent infringement proceedings. A non-exclusive licensee does not have such a right but may ask the proprietor to sue, by means of a Notary order, and if the patent owner does not commence proceedings within three months, the non-exclusive licensee may file a suit on its own behalf (and must notify the patent holder).

It is possible to join any number of parties as a defendant in the same proceedings, even following the filing of the suit, by either adding parties or by combining actions into a single set of proceedings. There must be a connection between the actions and it must be desirable to do so. For example, if there are multiple infringers of a single patent (the connection), it is likely the court will consider it desirable to add the defendant and hear the dispute together (as evidence, disclosure, experts etc. may be similar).

According to Spanish procedural law, while proceedings are pending, whoever proves to have a direct and legitimate interest in the outcome of the case may be admitted as plaintiff or defendant. As for suppliers, they may be sued for indirect patent infringement if they provide the main infringer with an essential element which enables the infringement, provided that the supplier knows (or it is obvious) that the provided element will be used for the infringement and that the provided element is not a product which can be easily found in the market.

Proceedings must be brought within five years from the date when the infringing actions could have been pursued in litigation proceedings. If the infringement takes place over a period of time, the claim may be brought within five years from the date the infringement ended. Please note that the criteria established in the Spanish Patent Act are subjective and will need to be decided on a case-by-case basis.

There is no such requirement, but according to Spanish procedural law, where one claim may be based on different legal titles (i.e., different patents), those which

Patent proceedings are dealt with by the specific Commercial Courts which have been assigned such task.

There are several such Commercial Courts across Spain. The court that has jurisdiction will be the court where:

•  the defendant is located; or
• where the infringing activities have taken place.

Infringement and validity are decided in the same proceedings.

No.

Yes.

On average, cases in the Commercial Court take approxi mately 7–8 months to reach a first hearing where procedural matters are discussed and the relevant evidence is submitted. Approximately 5–6 months after the first hearing, a trial for examination of witnesses  and experts will follow.

Trials are generally limited to one / two days, although sometimes in patent infringement and invalidity proceedings it takes up to three or four days. The judge ensures the case can be heard in this limited time by active case management, early identification of the issues, and limited evidence and witnesses. Based on our previous experience, a first instance decision should be expected 3–5 months after the trial. Thus, in Spain, patent infringement and invalidity proceedings last  15–19 months until a first instance decision is reached.

Since 2003, Commercial Court judges have become more specialised in intellectual property, which has raised the bar of expertise across the board, and particularly so in Barcelona and in Madrid. They do  not have technical or scientific expertise per se, but they have become more adept at dealing with  patent disputes.

If required by law or requested by both parties, the court may stay the execution of proceedings prior to the judgement until the matter has been resolved by the EPO.

Yes.

This is not expressly provided in the law.

Yes. The courts would have to determine a global FRAND rate.

Parties are entitled to instruct their own expert witnesses to provide evidence to support their case. In fact, expert witnesses provide the key evidence in all patent cases. Experts are often instructed to give expert opinion on common general knowledge, sufficiency, novelty and inventive step. In general, the judge will accept an expert report. In addition, the court may itself appoint an expert if requested by the parties or if the court finds it convenient.

The experts will usually be asked to produce a written report which is submitted as evidence. Subsequently, the expert will appear as a witness in the trial and will be cross-examined.

There is no general disclosure but parties may request that specific information / documentation which is relevant to the trial be provided. Disclosure of specific documents may be ordered either during the pre-trial stage and / or at trial upon request by one of the parties. Any information, which is relevant to the hearing, may be requested. The law also specifically states that the following information may be requested:

•  the names and addresses of producers, manufacturers, distributors, suppliers and merchandise and service providers;
• names and addresses of wholesalers and retailers  to whom the allegedly infringing goods have been distributed; and
• amounts of infringing goods produced, distributed, received, orders and the sums paid for such, must  be disclosed.

It is possible to make an application to court for disclosure before proceedings have commenced. The order is at the discretion of the judge.

An appeal may be lodged before the Court of Appeal of the city where the first instance hearing has been held within 20 business days from the day following notification of the first instance decision.

In very limited circumstances, an appeal can be lodged before the Supreme Court within 20 days from the day following notification of the appealed decision.

Regarding the appeal before the Appeal Courts, there are no specific grounds on which an appeal may be brought. The appealing party may simply ask the Appeal Court to reconsider the facts / evidence of the case (in this regard please note that new facts / evidence are only permitted on appeal in limited circumstances) or the interpretation and enforcement of the applicable regulation. Nevertheless, in general terms, an appeal may be brought on the grounds of:

• an error in the law; and
• error in the assessment of evidence; or
• an infringement of procedural rules or guarantees at first instance Court.

As for the appeal before the Supreme Court, parties may seek such an appeal when:

• the case concerns guardianship of fundamental rights;
• the value of the matter at trial surpasses six hundred thousand euros (600,000 EUR); or
• when the matter at trial is of interest for final appeal (judgments in conflict with case law or provincial appeal courts).

On average it takes about 12 to 15 months for the first appeal, and 15 to 18 months for the appeal before the Supreme Court. It must be noted that during the past years appeal proceedings have suffered longer delays due to COVID-19.

Appeals against judgments dismissing the claim shall have no suspensive effect, although in no case shall it be permitted to act in a manner contrary to what has been decided.

Judgments upholding the claim against which an appeal is lodged may be provisionally enforced except in the case of judgments declaring the nullity or revocation of the patent, in which case they shall not be provisionally enforceable.

Costs in patent litigation in the Commercial Court can vary considerably. In less complex patent litigation costs of the first instance proceeding may be in the range from sixty thousand euros (60,000 EUR) to ninety thousand euros (90,000 EUR). In more complex litigation, average costs are in the region of two hundred and fifty thousand euros (250,000 EUR).

The costs of appeals in patent litigation can also vary significantly. They are normally 50% of the fees at first instance.

Costs that a successful party may recover are limited to those minimum amounts set forth by the regional Bar Associations and some of the expenses incurred (i.e. expert reports). This would not be the case if the claimant has already calculated a fixed amount as requested damages, in which case the costs which can be recovered are calculated as a percentage of the fixed amount.

The main forms of ADR are mediation, negotiation and arbitration. Parties will use arbitration if required by contract. A key point to note is that decisions in negotiation and mediation are non-binding, whereas the arbitration decision is binding on the parties. Arbitration is used more than mediation in patent proceedings

No. The judge will only consult the parties on whether they have reached an agreement but there is no obligation to have considered these options.

The owner whose patent right is infringed may, in particular, seek:

• the cessation of the infringing acts, or their prohibition if such acts have not yet taken place;
• damages;
• the seizure of the products resulting from the infringement and the goods, materials and implements which constitute the means for putting the protected invention into effect;
• the attribution of ownership of the products, goods, material or implements seized;
• the adoption of the necessary measures to prevent further infringement of the patent and, in particular, the transformation of the products, goods, material or implements seized, or their destruction where this is indispensable to prevent further infringement of the patent; and
• exceptionally, the publication of the judgment convicting the infringer, at the expense of the defendant.

If the court concludes that there has been patent infringement, the court will order any of the above mentioned orders, although these orders are not automatic, as they must be expressly requested by the patent holder (claimant).

Damages shall include both the value of the loss suffered by the patent owner and the loss of profit suffered by the owner as a result of the infringement of its right. Damages may include, where appropriate, the costs of investigation necessary to obtain reasonable evidence of the infringement alleged in the proceedings.

When determining damages, a patent owner can choose between:

• the profits that the owner would foreseeably have obtained from the exploitation of the patent if the infringer’s competition had not existed, or alternatively, the profits that the infringer had obtained from the exploitation of the patent. In the case of non-pecuniary damage, compensation shall be payable, even if the existence of economic loss is not proven. Regarding moral damages, compensation shall be payable, even if the existence of economic loss is not proven.
• a lump sum which at least covers the royalty the infringer would have had to pay to the patent owner for exploiting the patent lawfully. In determining this royalty, particular account shall be taken, inter alia, of the economic importance of the patent, the remaining term of the patent at the time the infringement began, and the number and type of licences granted at that time.

It is possible to determine the damages to be paid in separate proceedings once the infringement has been declared and damages have been awarded. Nevertheless, the Court does not order an enquiry into damages per se. It is the claimant who must submit evidence and arguments for the damages sought and (if needed) request the infringer to submit any relevant information / document to this end.

No, under Spanish law it is not possible to obtain additional remedies if the infringement was deliberate.

Nevertheless, with regards to damages, it should be noted that all those who carry out any act of exploitation other than the manufacture or importation of the object protected by the patent or use of the patented process shall only be liable to pay damages if they have acted deliberately or with fault or negligence. In any case,  it shall be understood that the infringer has acted deliberately if they have been warned by the patent owner of the existence of the patent (properly identified) and of their infringement, along with a request that they cease the infringement.

The owner whose patent right is infringed may seek the seizure of the infringing products and the attribution of their ownership, in which case the value of the goods affected shall be deducted from the amount of damages. Regarding the possibility to recall the infringing products which are already in the market, the scope of this request and court order is a controversial issue and is currently decided on a case-by-case basis.

Yes. The requirements for a preliminary injunction are:

• fumus bonis iuris (the probable existence of the right);
• periculum in mora (a pending or imminent infringement); and
• payment of a security.

The courts have interpreted that the first requirement (fumus bonis iuris) is met when sufficient arguments  and evidence have been provided so that there is a real prospect of succeeding in the main proceedings (a final permanent injunction will be obtained).

The second requirement (periculum in mora) has been interpreted by the courts to mean that preliminary injunctions shall be adopted when there is certain urgency to prevent potential damages that could not be adequately compensated by the time the final decision is executed. Moreover, this requirement is not met if the patent holder has consented to the alleged infringement for a long period of time. This is analysed on a case-bycase basis. Thus, time is of the essence when analysing whether or not to file an interim injunction request.

Lastly, the requested interim injunctions must be instrumental (correspondence or homogeneity between the content and scope of the preliminary injunctions and the remedies granted by the judgment that may be delivered on the merits of the case) and proportional (the preliminary injunctions requested may not be replaced by other measures which are less burdensome for the defendant).

Yes, it may be requested in urgent cases, and the judge will decide if it is appropriate. In the past recent years many without notice injunctions have been granted in the context of the Mobile World Congress which takes place every year in Barcelona.

It is possible to obtain an injunction within a period of one to three months.

Yes. An appeal may be brought against a preliminary injunction. However, it will not suspend the effect of the injunction.

Unless expressly stipulated to the contrary, the petitioner of the injunction shall provide a security sufficient to satisfy the damages that a wrongly granted injunction may cause to the defendant.

Yes. The main proceeding must follow its own path until a decision on the merits is reached. Moreover, if the granted interim injunction was granted without notice, the applicant must commence proceedings on the merits within 20 days of the granting of the preliminary injunction or the injunction is null and void. At the proceedings on the merits, the judge may order a final injunction.

In transnational disputes in the EU, Spanish courts have international jurisdiction to hear the request and, if necessary, to adopt cross-border preliminary injunctions.

The Spanish procedural system does not foresee the possibility of initiating an ASI per se. The potential infringer may however initiate legal proceedings in order for the court to determine that there is no patent infringement.