An International Guide to
Patent Case Management for Judges

12.10 Appeals

The Provincial Courts have jurisdiction for appeals against judgments issued by the country’s commercial courts. Judgments issued by the Provincial Courts are in turn subject to appeals in cassation before the First Chamber of the Supreme Court.

Judgments issued by the Provincial Courts on appeals against SPTO decisions marking the exhaustion of administrative remedies are also subject to appeals in cassation before the First Chamber of the Supreme Court.

12.10.1 Ordinary appeals

Ordinary appeals¹²⁴ are those for which the law does not specify what grounds must be invoked, only that the judgment being appealed has adversely affected the appellant.

Spain applies a “limited” appeal system that does not give rise to an entirely new trial in the second instance. Adjudication in courts of appeal is restricted to a review of proceedings and judgments in the first instance, based only on the same elements considered by the lower courts concerned.

This means that the parties may not alter their claims or arguments on appeal. Nor, with certain exceptions, may they introduce new facts or evidence.

Among the exceptions, appellants may allege new relevant facts occurring:

• after the start of the time period allowed for sentencing by the lower court; or

• before then if the appellant can prove that they only learned of the facts later.

On the other hand, the law allows the following forms of new evidence to be submitted in the second instance:

• Documents in any of the following cases, that could not be filed in the first instance:

  • when dated subsequent to the claim or the response or the preparatory hearing;

  • when dated subsequent to the claim or the response or the preparatory hearing, and the party shows that he was unaware of their existence before then;

  • when it was not possible to obtain the documents owing to reasons not attributable to the party;

• Evidence unduly rejected in the first instance;

• Evidence admitted in the first instance that could not be taken for reasons not imputable to the applicant;

• Evidence relating to facts relevant to the decision on the case as referred to in the preceding paragraph.

An ordinary appeal represents a full review in the sense that the appeals court has the authority to review everything done by the lower court judge to verify consistency with procedural rules and substantive provisions applicable to the case. The appeals court may thus review the lower court’s assessment of the evidence and the factual and legal analysis underlying its decision.

Without prejudice to the foregoing, appeals courts are also subject to limits:

• they may not enter into lower court rulings not contested by the appellants (tantum devolutum quantum apellatum); and

• they may not worsen the appellant’s situation by their judgment on their appeal (reformatio in peius), but may do so in response to an appeal by the opposing party.

In cases where the ordinary appeal is based on a breach of procedural rules and safeguards there are different possibilities:

• If the breach (inconsistency, for example) was committed by the lower court in issuing its judgment, the appeals court may quash the judgment and then resolve the questions in dispute.

• If the breach occurred prior to the judgment, so as to invalidate the proceedings, the appeals court declares the proceedings invalid as from that point and remands the case to the lower court to complete them correctly and issue a new judgment (which will also be subject to ordinary appeal).

• If the breach occurred prior to the judgment and is curable, the appeals court allows time for the flaw to be corrected and then issues a judgment on the merits of the case.

12.10.2 Appeals in cassation

Appeals in cassation¹²⁵ must be grounded on a breach of procedural or substantive provisions considered “appealable in cassation”, a concept that is central to this class of appeals.

A judgment is deemed “appealable in cassation” when it:

• is contrary to Supreme Court jurisprudence;

• concerns matters on which Provincial Court rulings have been contradictory; or

• applies provisions on which Supreme Court jurisprudence has not been established.

Judgments may also be appealable in cassation “as a matter of public interest”. This is where the challenged judgment comes in a case where the matter in dispute is one of general interest as a matter of uniform interpretation of the law. General interest is deemed to exist when the matter potentially or actually affects a great number of situations, either in itself or because it transcends the case in question.

The application initiating the appeal needs to clearly identify and demonstrate how the judgment is appealable in cassation based on one of the three premises above. The breach challenged must also have been relevant to the judgment being appealed and duly raised during the trial or considered by the Provincial Court.

When the appeal is based on a breach of procedural rules, it is essential to show that:

• objections to the breach, if possible, were raised in a lower court prior to the appeal in cassation; and

• if raised in the first instance, the objection was raised again in the second instance. If the procedural breach consisted of a curable flaw, a remedy must have been sought in the appropriate instance or instances.

The purpose of appeals in cassation is to ensure the correct application of law, not to serve as a “third instance”. The assessment of evidence and establishment of facts may not be called into question at this stage, unless a clear and immediately verifiable error has been committed based on the prior proceedings.

Appeals in cassation are decided by judgments that definitively resolve the matters in dispute. However, if an appeal argues that a challenged lower court judgment was contrary to existing jurisprudence on the matter or matters at issue, it may be resolved by an order quashing the judgment and remanding the case to the lower court for a new judgment consistent with the jurisprudence concerned.