1.1 What are the principal sources of law and regulation relating to patents and patent litigation?
Spanish legislation
With respect to substantive law, the main regulations applicable to patent rights in Spain are Law 11/1986, dated 20 March 1986, on Patents (‘Patent Law’), and Royal Decree 2245/1986, dated 10 October 1986, which approved the Regulation for the Execution of the Patent Law.
With respect to procedural matters, civil proceedings on patent matters are governed by the provisions of the Patent Law as well as by the provisions of Law 1/2000 of 7 January 2000 regarding civil procedure (‘Civil Procedure Law’).
Both the Patent Law as well as the Civil Procedure Law have been modified by the Law 19/2006, dated 5 June 2006 on the enforcement of intellectual property rights that implements Directive 2004/48/CE of the European Parliament and of the Council of 29 April 2004 (said Law has been published in the Official Gazette on 6 June 2006).
Also, patent violations are considered a crime by Art 273 of the Spanish Criminal Code (Law 10/1995, dated 23 November 1995, and subsequent modifications such as those made by Law 15/2003 dated 25 November 2003), criminal proceedings being governed by Law on Criminal Procedure (Ley de Enjuiciamiento Criminal, dated 14 September 1882 as subsequently modified in particular by Law 38/2002, dated 24 October 2002).
Finally, the decisions of the Spanish Patent Office with respect to the granting of a patent may be appealed before the administrative courts, those proceedings being governed by the provisions of Law 29/1998, dated 13 July 1998 (Law on the Contentious Administrative Jurisdiction).
Except when stated otherwise, our comments are made in relation to actions brought under civil proceedings.
European legislation.
In this regard, Spain is a member of the Munich Convention on European Patents, dated 5 October 1973 (published in the Official Government Gazette dated September 30 1986).
International legislation
From a general perspective, Spain is a member of the following conventions and accords relating to industrial property: the Paris Convention for the Protection of Industrial Property of 20 March 1883; the Agreement on Trade-related Aspects of Intellectual Property Rights (TRIPS) ratified by Spain by means of the Ratification Document of December 1994.
More specifically, with respect to patents, Spain has signed the following international treaties: Patent Cooperation Treaty (PCT), signed in Washington (1970) as well as the Strasbourg Accord relating to the International Classification of Patents, signed on 24 March 1971.
Spain has not joined the Patent Law Treaty dated 1 June 2000.
1.2 What is the order of priority of the relevant sources, ie which take precedence in the event of a conflict?
The international treaties, once published in the Official Government Gazette become integrated into the internal system of laws, will be directly applicable in Spain having priority over the rules of internal laws that are incompatible or contradictory with respect to their provisions.
2.1 In which courts are patents enforceable? Are they specialised patents courts? If not, what level of expertise can a patent holder expect from the courts?
The Law 8/2003, dated 9 July 2003, modified the court system and created the Commercial Courts. The Commercial Courts are granted jurisdiction to hear cases, among others, regarding industrial property. The competence of those courts in patent cases is described in more detail in question 6.1 below.
These Commercial Courts were created, among other purposes, with the aim that the matters on which they were given jurisdiction would be resolved by judges who would have specific knowledge in those areas. Although the creation of the Commercial Courts is very recent (September 2004) it seems reasonable to expect that it will improve the level of expertise of judges on patent cases. Also, it is worth mentioning that in some appellate courts a section has been designated to hear all cases concerning industrial property rights (this is particularly the case in, relation to Section 15 of the Appellate Court of Barcelona, which is highly regarded for its expertise in that area).
2.2 To what extent are courts willing to consider, or are bound by, the options of other national or foregoing courts that have handed down decisions in similar cases?
In the Spanish legal system, case law is not defined as a source of law. The function assigned to it is that of a complement to the legal system. In order to be considered, case law must involve two according decisions rendered by the Supreme Court.
Decisions rendered by foreign courts will not be considered case law, and therefore will not be binding in any way on the Spanish courts. This does not mean however that such foreign decisions may in practice be used by the Spanish courts as guidance in particular for issues that may still not have been addressed in any Spanish decision.
2.3 Do the courts deal with infringement and invalidity simultaneously? Or must invalidity actions be brought in separate proceedings? If so, before which court or government agency (eg Patent Office)?
In Spain, courts may hear a patent infringement and invalidity in the same proceedings. In this sense, a judge may hear a law suit for patent infringement in the same proceeding as one for a counterclaim in which the invalidity of the patent that was supposedly infringed is put forth.
Without prejudice to the foregoing, in accordance with the provisions of the Law on the Contentious Administrative Jurisdiction, any interested party is entitled to lodge a contentious administrative appeal against the grant of a patent. The administrative law jurisdiction is set up as a jurisdiction to review the acts of the administration (the Spanish Patent Office) and thus it may only concern the possible omission of essential procedures in the proceeding or issues resolved by the administration during the grant procedure. Therefore, issues such as the novelty or inventive step of the patent may only be dealt with by the administrative courts in those cases where the Spanish Patent Office has been able to review those issues, that is when the proceedings followed for granting the patent have included the prior examination of the patent by the Office (this prior examination proceeding, which was initially available to patents in the food sector, was made generally available to other patents by Royal Decree 996/2001). In those cases, the same cause of invalidity discussed before the administrative courts may not be argued again in civil proceedings.
2.4 Who can represent parties before the courts handling patent litigation and/or the government agency dealing with patent validity issues?
In all judicial proceedings relating to patents the parties must be represented by attorney and procuradores (attorneys representing the parties in court and entrusted with filing and receiving documents and communications with and from the courts).
The official language of the proceedings is Spanish.
However, the parties as well as their attorneys may use the language that is also official in the autonomous community. (Spain is territorially and politically divided into autonomous communities which have their own political bodies, and may have their official language in addition to Spanish in which the judicial actions take place (and in which language documents may be presented). The judges may also use the official language of the autonomous community if none of the parties oppose due to lack of knowledge of such language that could result in such party not being properly defended.
2.6 To what extent are courts willing to grant cross-border or extraterritorial injunctions?
The provisions of the Brussels and Lugano Convention (and the Regulation 44/2001 on jurisdiction and recognition and enforcement of judgments in civil and commercial matters) are applicable in Spain.
In this respect, we are not aware of any case where Spanish courts have been confronted with granting a cross-border injunction against a patent violation. Under Art 2 of the Brussels Convention it would seem that a Spanish court, if the defendant was domiciled in Spain, could grant a cross-border injunction to deal with infringements by that defendant in other countries. However, the same issues that have arisen in that area in other countries that are parties to those conventions are also applicable in Spain. In particular, considering that Spanish law allows the nullity of a patent to be raised in a proceeding for violation of a patent and considering also that Spanish law (Art 22 of the Law 6/1985 on the Judicial Power) and Art 16 of the Brussels Convention provide for the exclusive competence of Spanish courts to deal with the nullity of a Spanish patent, it is unclear to us whether a Spanish court would be willing to grant cross-border injunctions in patent cases. This matter being pending before the ECJ (cases GAT v Luk (C-4/03), and Primus v Roche (C-539/03)), the answer will be provided by the position adopted by the Court of Justice on those cases.
2.7 To what extent do courts recognise the blocking effect of ‘torpedo’ actions abroad?
As in the answer to the previous question (cross-border injunction), we are not aware of any case where Spanish courts have dealt with the blocking effects of a foreign torpedo action. In our view, however, unless there was a clear abuse of the proceedings the courts would most likely apply the provisions of the Brussels Convention thus giving effect to such torpedo actions.
3.1 How is patent infringement assessed? To what extent does the doctrine of equivalents apply in an infringement action?
To assess a patent infringement the judge analyses whether the product or procedure used by the third party falls within the scope of the invention.
To establish the extension of patent protection, the Spanish system incorporates in Art 60.1 of the Patent Law most of the provisions of Art 69.1 of the European Patent Convention, according to which the scope of protection conferred by a patent is determined by the content of the claims. However, our case law, echoing the provisions of the Interpretive Protocol of the European Patent Convention, states that the description and drawings of such patent must be taken into account in order to interpret the scope of the protection of the claims.
With respect to the doctrine of equivalents, in a decision dated 10 June 1986 the Supreme Court had referred in this matter to the ‘fundamental principle of the invention’. In this regard, equivalents were considered to be those cases where there was a change on form, material, size, order or even replacement of elements of a patent but the fundamental principle of the invention remained unchanged.
Notwithstanding this early decision of the Supreme Court, only until very recently have there been cases where the courts have expressly referred to the doctrine of equivalents. In particular, there have been some recent cases where the Appellate Court of Barcelona has referred to this matter. In the first place it is worth mentioning the decision of the Appellate Court of Barcelona dated 18 September 2000, where the court, in the first decision that tried to define the doctrine of equivalents in Spain, seemed to adhere to a double identity test (when two means perform the same function to achieve the same result even if in different ways).
More recently, however, the same court in a decision dated 20 April 2005 (Freyssinet and Cinematique v Mekano 4) stated that the double identity test may not always be appropriate and that in some cases other criteria must be used such as the triple identity test (same function, same way and same result) or the criteria of obviousness (if an expert would have considered the equivalent item as an obvious alternative to the claimed item). Later, in a decision dated 2 May 2005, in considering the violation by equivalence of a pharmaceutical process patent, the court clearly stated that the scope of the protection of the patent may not be determined by the intention of the patentee but by the contents of the claims, with the assistance of the description and the drawings for their interpretation. Finally, the decision of the Appellate Court of Barcelona dated 17 June 2005 (Merck v Synthon) suggests that in some cases (mechanical patents) the double identity test may be better suited for determining the equivalence while in others (pharmaceutical process patents) not only the function and the result but also the way in which the invention operates (the process) need also to be taken into account as well as the opinion of the expert (obviousness test).
When faced with a law suit for patent infringement, the defendant may oppose the infringement using the defence that the product or procedure in question does not fall within the scope of the patent (either literally or by equivalence). Also, the defendant may invoke, by means of a counterclaim or by means of defence, the total or partial invalidation of plaintiff’s patent.
3.3 To what extent can enforcement of a patent expose the patent holder to liability for an antitrust violation?
In applying the provisions of the regulatory community standards regarding the right to competition (Arts 81 and 82 of the Treaty of the European Community and Regulation 772/2004 of the Commission issued on 27 April 2004 with respect to the application of para 3 of Art 81 of the Treaty), it may be understood that the holder of a patent is acting in contravention of the right to competition when, by making use of the powers and rights granted by the patent, the conditions or the structure of the affected markets are modified fraudulently.
In a closely-related area, the Patent Law provides for certain situations where the monopolistic effects granted to the holder of the patent are softened: it is obligatory to work the patented invention (within a period of four years from the date of application or three years from the date the grant of the patent was published in the Official Bulletin of Industrial Property) by implementing it in Spain or in the territory of a Member of the World Trade Organisation in such a manner that the working is sufficient to satisfy demand on the national market. If the patent has not been worked or has been worked insufficiently, then if requested, a compulsory license will be granted. Other cases where compulsory licenses are granted are:
A patent is declared invalid in the following cases:
3.5 Can a court only partially invalidate a patent? Can it transform the patent in a utility model?
Where the causes of invalidation only affect part of the patent, partial invalidation is declared through annulment of the claim or claims affected by those causes. Partial invalidation of a claim may not be declared.
Where invalidation is partial, the patent shall continue in force for the claims that have not been annulled, provided that it can constitute the subject matter of a separate patent.
It is not possible to transform the invalid patent in a utility model.
Once the patent is granted it is not possible to amend it.
3.7 Are there any grounds on which an otherwise valid patent can be deemed unenforceable, owing to misconduct by the patent holder, or for some other reason (eg, expiry of time limit)?
Patents are forfeited in the following cases:
3.8 Can a patent holder bring a law suit claiming both patent infringement and unfair competition for the same set of facts?
In a proceeding in which a law suit is brought for patent infringement, actions for unfair competition may be included. In this regard, the same set of facts may include an infringement of a patent but may also constitute acts of unfair competition such as, for example, an improper use of the other party’s reputation or efforts.
4.1 Who can sue for patent infringement (patent holder, exclusive licensee, non-exclusive licensee, distributor)? Does a licensee need to be registered to sue?
The Patent Law establishes, in general, that the owner of a patent may bring appropriate action of any type or nature before the ordinary courts against any person who infringes his right. Also, unless otherwise agreed, the holder of an exclusive licence may, in his own name, exercise any action that may be exercised by the owner of a patent in respect of third parties who infringe his rights; however, the holder of a non-exclusive licence may not exercise such actions.
Nevertheless, a non-exclusive licensee may request through a notary that the owner of the patent commence the relevant legal action. Where the owner refuses to do so or does not bring the appropriate action within a period of three months, the licensee may do so in his own name, joining to the claim the request made to the owner of the patent.
With respect to the requirement of registering the licence in the registry so that the licensee is authorised to sue, the Patent Law stipulates that the licence only has effect against third parties of good faith when the licence has been recorded in the Patent Register. Therefore, in principle it is required that the licence is registered (decision of the Supreme Court dated 18 October 1995, and 17 January 2001), but a decision of the Appellate Court of Barcelona dated 21 June 2001 considers that registration is not necessary when the defendant has acted in bad faith.
4.2 Under what conditions, if any, can an alleged infringer bring a law suit to obtain a declaratory judgment on non-infringement?
As established in the Spanish Patent Law, any interested party may bring an action against the owner of the patent requesting that the court declare that a particular act does not constitute infringement of the patent.
Before bringing this action, the interested party must, through a notary, ask the owner of the patent to state his position on whether the patent is opposed to the industrial working carried out in Spain by the claimant or to the serious and effective preparations the claimant has made for that purpose. At the expiration of a period of one month from the date of such request, if the owner of the patent has not replied or if the claimant does not agree with his reply, he may bring the action for declaration of non-infringement.
In any case such action may not be brought by any person against whom a claim for infringement of the said patent has already been started.
4.3 Who can be sued for patent infringement? Can the company directors be sued personally? Under what conditions, if any, can someone be sued for inducing or contributing to patent infringement by someone else?
From the point of view of civil law, the law suit for patent infringement may be brought by the owner of the patent (or the licensees as mentioned in question 4.1 above) against any third party (either an individual or a legal entity) who infringes his right.
From the point of view of criminal law, the action cannot be brought against a legal entity or corporation. Consequently, if a corporation is involved, criminal actions for patent violation must be directed against the company directors personally.
As stipulated in the Civil Procedure Law, as long as a proceeding is pending, anyone who proves that he has a direct and legitimate interest in the outcome of the law suit may be admitted as a plaintiff or a defendant. If a new party is admitted by the court, his participation will not cause the proceedings to be restarted from the beginning.
Also, the plaintiff, before the defendant’s response to the complaint, may broaden the complaint so as to include new defendants. Thereafter it is not possible to include new defendants in the same proceedings (a new action must be instituted and it has to be requested that both proceedings are joined).
In addition, the plaintiff may, during the course of the proceeding, desist or abandon the action with respect to any or all of the defendants. As well, all the defendants, or any of them, may comply with the claim during the course of the proceeding in which case the proceeding will end with respect to the compliant defendant.
5.1 What options are open to a patent holder when seeking to enforce its rights in your country?
The patent holder whose rights have been infringed in Spain may bring the pertinent civil or criminal actions before the competent authorities.
It is possible to bring a criminal action against a third party infringer of a patent. In particular, according to Art 273 of the Criminal Code, criminal action may be brought against a third party that:
The sanctions imposed are: six months to two years in prison and an economic penalty. Such sanctions may be increased to one to four years of prison and an economic penalty and prohibition from carrying on the profession relating to the crime for a period of between two to five years if there are special circumstances, eg where the crime is especially serious, taking into account the value of the objects produced illegally or the special importance of the damage inflicted.
Pursuant to the provisions of Regulation CE No 1383/2003 of the Board dated July 2003, the customs authorities may be requested to intervene to withhold merchandise when they suspect that the merchandise attempting to enter Spain infringes a Spanish patent.
5.4 To what extent are alternative dispute resolution (ADR) methods (such as arbitration or mediation) available to resolve patent disputes? If arbitration is available to assess invalidity, will your Patent Office recognise and execute an arbitral award declaring a patent invalid?
Arbitration may be used for conflict resolution to resolve disputes involving industrial property, such as licensing agreements or other forms of transactions relating to patents.
The invalidity of a patent must be resolved in a civil court.
The procedure for patent infringement is commenced with a statement of complaint submitted to the Commercial Courts.
In civil proceedings, the Patent Law provides for the competence only of those courts (Commercial Courts) located in major cities (the cities where the Superior Court for each autonomous region sits). The competent court to deal with patent litigation is the Commercial Court located in the city, from among those mentioned above, that corresponds to the defendant’s domicile. If the matter concerned is a violation of patent rights, the plaintiff may choose between the aforementioned court (defendant’s domicile) or the court corresponding to the place where the violation has occurred or where it has produced its effects. If there were several defendants and several courts could be competent, the plaintiff can choose between them (Art 53.2 Law on Civil Proceedings).
The statement of complaint must be accompanied by all documentary and expert evidence. Thus, in the case of patent infringement the complaint may be accompanied by an ex parte expert opinion to the effect that the product used by the defendant is the subject matter of the patent.
When the complaint is admitted for processing, the defendant is given a term of 20 days to answer the complaint. With a complaint for infringement, the defendant may invoke, by means of a counterclaim or by means of defence, the total or partial invalidation of the plaintiff’s patent. The defendant may also provide an expert opinion with the answer to the complaint (although the expert opinion must be provided by the plaintiff or the defendant with the complaint or with the answer to the complaint, in some situations they may be provided at a later stage but, with some exceptions, before the preliminary hearing).
Once the defence against the complaint has been submitted, the court will set a date for the preliminary hearing. At the preliminary hearing:
The parties may also request (either in the complaint or in the answer to the complaint or in some cases at the preliminary hearing) that the judge appoint a judicial expert to issue a report on the matter subject to controversy. Further, if the court considers that the evidence proposed by the parties is insufficient it may also suggest to the parties that a judicial expert is appointed.
At the preliminary hearing a date is set for the trial. At the trial, the evidence (witnesses, testimony by the parties, experts opinions, etc) submitted by the parties is examined and each of the parties submits the final conclusions on the facts and legal grounds for its position.
The proceeding finishes with the final judgment; that is subject to appeal before the corresponding appellate court.
The disputed issues are decided by a judge.
6.3 To what extend are documents, affidavits, witnesses and/or (court-appointed or private) experts used? Is it possible to cross-examine witnesses?
As mentioned above in question 6.1, together with the complaint and the answer to the complaint, the parties will bring all evidence (both documentary and expert) on which they support their claims.
At the trial the evidence – witnesses, testimony by the parties, experts opinions, etc – requested by the parties and admitted is examined. In particular, with respect to witnesses and expert witnesses, they are subject to the questioning of the party that has proposed them and to cross-examination by the other party, and the judge himself may formulate questions as he may deem appropriate. At the trial, once the examination has been conducted each of the parties presents to the judge its conclusions.
6.4 To what extent is pre-trial discovery permitted? If it is permitted, how is discovery conducted? If it is not permitted, what other, if any, mechanisms are available for obtaining evidence from an adverse party or from third parties?
The Spanish Patent Law provides for ‘inquiries to substantiate facts’. This allows that the court, as a preliminary evidence preparatory to the proceeding, be requested to order urgently the verification of facts that may constitute a violation, through an inspection carried out by the judge with experts in the premises where the alleged violation may be taking place.
In any case, before deciding upon the request made, the judge may require any reports and order the investigations he deems necessary. The inquiries may only be agreed upon when it may be presumed that there has been infringement of the patent and that it is not possible to prove the facts without carrying out the inquiries requested.
The judge agrees to an inquiry when he considers that the request is well founded. The requesting party must give a bank guarantee to cover the damages that may be caused to the other party as a result of carrying out those inquiries. The information obtained as a result of this measure will remain secret and it may only be used by the requesting party to submit the complaint.
During the inquiry to substantiate the facts, the judge, with the assistance of the expert or experts designated for the purpose, and after having heard the arguments of the person requesting the inquiry, determines whether the machines, apparatus or equipment inspected could be used to carry out the alleged infringement of the patent.
Where the judge deems that infringement of the patent cannot be presumed, he terminates the inquiry. In other cases, the judge, with the assistance of the expert or experts designated for the purpose, makes a detailed description of the machines, apparatus, processes or equipment by means of which the alleged infringement was presumed to be carried out.
Within two months of carrying out the inquiries the infringement action must be brought, or the inquiries have no effect and they may not be used for any other legal action.
In addition to the ‘inquiries to substantiate facts’ mentioned in the above paragraphs, Law 19/2006, dated 5 June 2006 on the enforcement of intellectual property rights provides some additional pre-trial evidence on cases of violation of industrial property rights (including patents): ie evidence to collect data on the origin and distribution networks of infringing products, and the request for exhibition of banking, financial, commercial and accounting documents from the person that is deemed to be responsible for the violation. In those cases, the requesting party must offer a bank guarantee against damages that may result from carrying out that evidence.
The Law on Civil Procedure also provides that the carrying out of evidence in advance may be requested from the court when there is a well-founded fear that the said acts may not be carried out subsequently; in any case the complaint must be filed within two months of obtaining the advanced evidence. In a close related matter, the law also allows preventive measures to be requested, prior to bringing the complaint, to preserve an item on which it is intended to carry out some evidence from being lost or destroyed. In this sense the Law 19/2006 dated 5 June 2006 on the enforcement of intellectual property rights provides that, in cases of infringement of industrial property rights, such preventive measures may include seizure of the items under discussion as well as of the materials and instruments used for their manufacturing or distribution. The measures will cease if the complaint is not filed within 20 days.
6.5 What level of proof is required for establishing infringement or invalidity?
Spain is governed by the principle of free assessment of the evidence by the judges and the only requirement is that the following defects to not enter into their assessment:
On the other hand, the Law also stipulates that any contradiction arising from different expert reports must be resolved so that the doubt falls on the party who carries the burden of proof. Therefore, the burden of proof falls on the party who petitions the infringement or, as the case may be, the invalidity of the patent.
6.6 How long do patent infringement proceedings typically last? Is it possible to expedite this process?
The duration of legal proceedings depends on the workload of the court involved and the complexity of the issues at stake. In general terms, legal proceedings up to a ruling at first instance can take around 12 months. It is not possible to expedite this process although interim remedies may be requested if there is urgency and the other requirements provided for by the law (as described in question 8) are met.
6.7 What options, if any, are available to a defendant seeking to delay the proceedings? Under what conditions, if any, can proceedings be stayed? How can a plaintiff counter delaying tactics of the defendant?
With regard to delaying the proceedings, it should be mentioned that the Civil Procedure Law envisages certain situations that, should they occur or be contemplated by the judge, would involve the suspension of the main proceeding.
Examples of those types of situations are:
In the same way, both parties may request the suspension of the proceeding by mutual agreement to try to reach an agreement. If the judge deems the suspension appropriate, the proceeding will be suspended.
In any event, it should be taken into account that the Law allows the judge to impose a fine on the party who has acted against the rules of procedural good faith (for example if the court considers that the defendant has made claims that manifestly abuse the law or that involve fraud against procedural law).
7.1 What remedies are available against a patent infringement (final injunction, delivery up or destruction of infringing goods, publication of the decision, recall-order, monetary remedies, etc)?
The owner of a patent whose rights have been infringed may, in particular, seek:
7.2 To the extent it is possible to obtain a final injunction against future infringement, is it effective against the infringer’s suppliers or customers?
A ruling may be obtained in which the defendant is ordered to cease the infringement, but not a prohibition in general against future infringements.
If the distributors and customers are not part of the proceedings the ruling will not affect them. However, we must note that under the Law 19/2006 on the enforcement of intellectual property rights, it is possible to request the ceasing and the measures to prevent violation (as described in questions 7.1(1) and (5) above) against intermediate parties whose services have been used to violate patent rights, even if such services do not constitute a violation.
7.3 What monetary remedies are available against a patent infringer (reasonable royalty, lost of profits, or some other basis)? Are punitive damages available? If so, under what conditions?
Compensation that may be claimed includes the following:
In fixing the amount, special consideration is given, inter alia, to the economic importance of the patented invention, the remaining term of the patent at the time of the infringement and the number and class of the licences granted at that time.
Punitive damages are not contemplated in Spanish Patent Law.
8.1 Is preliminary relief available? If so, what preliminary measures are available (eg preliminary injunctions) and under what conditions?
In Spain preliminary relief is available.
Specifically any person may request that the judicial body adopt preventive measures to ensure the effectiveness of a legal action. The applicant of said preliminary measures must prove that the patent is being worked or that serious and effective preparations have been undertaken to that end.
The preventive measures to be adopted are those that duly ensure total effectiveness of the judgment to be pronounced, in particular, the following:
Law 19/2006 on the enforcement of intellectual property rights also provides for the possibility of adopting all those preventive measures against intermediate third parties in the same way as described in question 7.2 above.
The measures can only be granted if the petitioner proves the fumus boni iuris (that the right for which relief is requested is likely to succeed in the proceedings) and the periculum in mora (that waiting for the end of the proceeding will involve serious and irreparable damage).
8.2 Is ex parte relief available, where defendant is given no notice at all? If so, under what conditions?
Preliminary relief may be adopted by the judge without hearing the other party (in audita parte) when the petitioner proves that there is urgency or proves that the hearing may compromise the outcome of the preliminary relief.
8.3 Is plaintiff entitled to ask for an order that the defendant’s premises are searched and a description of the infringing goods (and the accounting relating thereto) is made in order to establish proof of infringement (saisie-contrefaçon)? If not, what other mechanisms, if any, are available for seizing and preserving evidence for trial?
The ‘inquiries to substantiate facts’ and other measures to preserve evidence are admissible as described in question 6.4 above.
8.4 Can the defendant put the validity of a patent in issue in preliminary injunction proceedings?
The defendant may raise the issue to discuss whether the petition meets the requirement of fumus boni iuris although the court will not take a decision as to the validity at this stage, and some courts refuse to consider this issue on the basis that this is a matter to be discussed in the main proceedings and not at this stage (eg decision of the Appellate Court of Vizcaya dated 14 January 2003).
The plaintiff will submit a document requesting the preventive measures together with the documents evidencing that the requirements for its adoption are fulfilled. As a general rule, preventive measures may be requested together with the action; exceptionally they may be requested before the action is brought, provided that in that case the complaint is filed within 20 days following its adoption. Together with the document requesting the preventive measures, the petitioner must set forth the evidence it intends to use (evidence may not be added subsequently).
Subsequently the court will summons the parties to a hearing where the parties can state their respective positions and submit the evidence they consider necessary (if approved by the judge). The court will then rule on the adoption of the preventive measures.
8.6 To what extent are documents, affidavits, witnesses, and/or experts used in preliminary injunction proceedings?
In the preliminary relief each one of the parties must make use of all those documents that support their petition and may request the submission of other types of evidence (witnesses, experts, etc) on which to base their right.
8.7 What level of proof is required for establishing infringement or invalidity in preliminary injunction proceedings?
In accordance with the provisions of the Civil Procedure Act, the level of evidence that must be proved is lower than that required to rule on the main proceedings. The Law provides that the judge, on the evidence filed, must reach the conclusion that there is a basis for the action being brought; that is, he must base his decision on the likelihood that the claim will succeed.
Ordinarily a preliminary injunction may take around three to five months.
8.9 Where a preliminary injunction is granted, is it necessary to start main proceedings to confirm the preliminary injunction?
As we said before, preventive measures may be requested before filing the complaint provided that the main proceedings are initiated within 20 days of the granting of such measures. The proceeding for preliminary relief does not suspend the main proceeding. If the main proceeding is not instituted within the aforementioned period of 20 days, the court will:
9.1 What avenues of appeal are available for a defeated party in main proceedings or preliminary injunction proceedings? Under what conditions?
The decisions of first instance may be appealed before the Appellate Courts.
With respect to the rulings handed down by the appellate courts, extraordinary appeal before the Supreme Court is only allowed:
9.2 How long do appeal proceedings typically last?
Duration may vary depending on the court involved. Appeal proceedings can take between 18 and 24 months.
10. LITIGATION COSTS
10.1 What level of cost should one expect to incur to take a case through to a first instance decision, preliminary injunction proceedings and/or appeal proceedings?
In the first place, the party must pay the fees of attorneys and procuradores. Unlike the attorneys, the fees of the procuradores are based on the amount of litigation involved. In addition, the companies initiating proceedings and whose net business volume in the immediately preceding taxation period was greater than €5m must pay a judicial tax (both in the lower and appellate courts). The amount of this tax is calculated as follows: fixed amount (between €90–600) + variable amount (a rate that varies depending on the amount in dispute).
Also, where the party requests the appointment of a judicial expert, the party who requests it must pay the fees of such expert.
10.2 Are costs recoverable from the losing party?
Costs of the proceedings may be recovered, including the costs of expert evidence. In this regard, if a party succeeds on all counts the court will charge the costs to the losing party, unless the court determines that the case presents serious doubts in fact or in law. If only some part of the petitions of a party have been accepted, each party will bear its own costs except if the court considers that one of the parties has litigated in bad faith. With respect to attorney’s fees, the recovery may not always include all the fees borne by one of the parties but only as determined by the court on the basis of the criteria set forth by the applicable bar association.
11.1 What are the important developing and emerging trends in your country’s patent law?
There is a current trend sponsored by law professionals to try to amend the Spanish Patent Law in order to improve the procedure for granting Spanish patents, for example, by speeding up the reports issued on the state of the art, so that the patent applicant can have these reports before the priority period expires. The intended amendments would also include provisions to make the granting procedure with prior examination, which is currently optional, compulsory for all patents.
11.2 To the extent it relates to patent enforcement, please outline any major patent legislation in the pipeline.
The Spanish Patent Law is currently being amended as a result of the implementation of Directive 2004/27/EC of the European Parliament and of the Council of 31 March will incorporate the ‘Bolar Clause’ into national law. The Bolar Clause excludes from the scope of the patent studies and developments necessary to process an application for marketing authorisation of a generic product before the patent’s expiry. The Bolar Clause is contemplated in the second final provision of Bill 121/000066, which modifies s 52.1 b) of the current Patent Law regarding the exception of experimental use.
12 USEFUL REFERENCES
12.1 Please identify any useful works of reference relating to patent law
and patent litigation in your country including useful websites?
Gomez Segade La Ley de Patentes y Modelos de Utilidad (Civitas, 1988)
J Pedemonte Feu Comentarios a la Ley de Patentes (Bosch, 1995)
LA Cucurella Galiana El proceso civil en materia de patentes (Comares, 1999)
C Salvador Jovaní El ámbito de protección de la patente (Tirant lo Blanch, 2002)
