An International Guide to
Patent Case Management for Judges

12.2.2 Administrative review procedures

Acts and decisions taken by SPTO bodies in proceedings of various kinds include the handling of administrative appeals, which the SPTO itself both processes and resolves. Final SPTO decisions mark the exhaustion of administrative remedies and are then subject to judicial review.

Judicial appeals against all kinds of final SPTO decisions have traditionally been handled by administrative courts. That changed in 2022, when legislation assigned jurisdiction to specialized civil courts for appeals against SPTO industrial property decisions when those decisions marked the exhaustion of administrative remedies (see Section 12.3.1).

Since the entry into force of LP-2015, the interplay between proceedings brought before the SPTO and those handled by courts, apart from that described above, has raised a point of particular interest: the possibility allowed for patent owners¹⁰ to amend their patents through recourse either to the SPTO (limitation procedure) or to the courts, in the context of civil action seeking invalidation of the patent (see Section 12.4). Since this two-track framework can result in conflicting situations, the law provides for ways to coordinate procedures. The law stipulates that courts must notify the SPTO when limitation of a patent has been sought in the context of invalidation proceedings, and the SPTO must in turn enter that fact into the Patent Registry. Once the court has made its final ruling on the limitation request it must then notify the SPTO accordingly, also for entry in the Patent Registry. It is stipulated further that when proceedings for the invalidation of a patent are pending before a court, the acceptability of requests for limitation of the patent is subject to that court’s authorization. Lastly, if, during the course of invalidation proceedings before a court, the patent should be amended by the SPTO pursuant to a request made before the start of court proceedings, the owner may request that those proceedings be based on the patent as so amended.

Similar issues arise from the interplay between proceedings before the EPO and national courts concerning the validity of European patents previously validated in Spain. As mentioned earlier, European patents are granted through centralized procedures before the EPO and then replicated as multiple national patents in countries designated by the patent owner. Opposition procedures are also centralized through the EPO, which are conducted before the Opposition Divisions, whose decisions are reviewable in the last resort by the Boards of Appeal. The European process for limiting patents works in a similar fashion.

This can result in situations where the same question is raised about the same European patent before the EPO (in the context of opposition or limitation proceedings) and before national courts (in the context of invalidation proceedings), the patent having been previously validated in the contracting State concerned. The following guidelines then apply:

• A decision by the national court to invalidate the (previously validated) patent produces effects only in the contracting State concerned.

• A decision by the EPO to revoke or amend a European patent produces effects in all of the contracting States designated, even if national courts in one or more of those States have previously validated it.

• The national court decision to invalidate the patent produces effects in the contracting State concerned even if the EPO has decided to maintain its validity, in which case it remains valid in all other contracting States having validated it.

In the event that challenges to the validity of a European patent are brought on parallel tracks, before both the EPO and a national court (in the context of infringement proceedings), it is not uncommon for the national court to find the patent valid and to have been infringed and to order legal remedies pursuant to national law – and then, on the parallel track, for the patent to be revoked by a decision of the EPO.

Since the late 1990s, in order to avoid such situations, EPO bodies have been asked to “accelerate their proceedings.” Various other remedies are also available under the national laws of contracting States. In the case of Spain, however, since national law does not specifically provide for such circumstances, the only solution at present is recourse to the instruments offered by general procedural rules. On this point, the Provincial Court of Madrid¹¹ has considered that when a ruling is to be made, if opposition proceedings are also underway before the EPO, the judicial proceedings should be suspended subject to agreement by the parties. The Provincial Court of Barcelona, on the other hand, has considered under the same circumstances that the court can suspend the proceedings ex officio.¹²