An International Guide to
Patent Case Management for Judges

12.6 Judicial patent proceedings and case management

12.6.1 Key features in patent proceedings

Judicial proceedings relating to patents are handled in Spain within the civil jurisdictional division, and more specifically by specialized commercial courts.

The basic rules governing such proceedings are contained in LP-2015, which dedicates Title XII to “Jurisdiction and Procedural Regulations”.⁶⁷ Also applicable, for matters not covered in LP-2015, are procedural rules contained in the LEC.

One of the more noteworthy characteristics of patent-related litigation in Spain is that the cases are adjudicated by specialized civil courts.

Beyond patent infringement, invalidation and declaration of non-infringement actions,⁶⁸ specialized commercial courts have recently been assigned jurisdiction for appeals against SPTO decisions that mark the exhaustion of available administrative remedies for industrial property disputes. Among others, such decisions include patent refusals, oppositions, limitations and the validation of European patents. Jurisdiction for reviewing such SPTO decisions was reassigned from the country’s administrative courts⁶⁹ to civil courts by Organic Law No. 7/2022. The type of judicial proceedings and the court competent to conduct them varies according to the matter in dispute, whether it be patent infringement, invalidation, declaration of non-infringement actions or appeals against SPTO decisions.

As discussed in greater detail below, patent invalidation, patent infringement and declaration of non-infringement actions are adjudicated in the first instance by ordinary commercial courts,⁷⁰ as regulated by the LEC, with significant particularities introduced by Title XII of LP-2015.

Unlike the approach taken by other legal systems, patent infringement and invalidation cases can be handled in Spain as parts of the same proceeding by a single commercial court, which is a common approach in forensic practice.

Patent cases typically start with a patent owner filing an infringement complaint and the defendant denying the infringement and filing a counterclaim for invalidation of the patent allegedly infringed, or invalidation of one or more of the patent’s claims. The judge then analyzes the validity of the patent, and if the invalidation counterclaim is denied, turns to the alleged infringement.

It is also common for the party seeking invalidation and/or a declaration of non-infringement, to initiate the proceedings, with the defendant then filing a counterclaim for patent infringement (seeking a declaratory judgment, injunction, removal and damages).

The process works differently for the judicial review of SPTO patent decisions marking the exhaustion of administrative remedies, as mentioned earlier. In those cases, SPTO decisions are appealed directly and in a single instance to the commercial sections of specific Provincial Courts.

The process for substantiating these appeal proceedings does not go through juicio ordinario, but juicio oral (characterized by greater simplicity of proceedings), subject to the special procedures introduced in Article 447bis of the LEC (see Section 12.6.9.2).

12.6.2 Pre-action and pre-trial

Before filing an infringement action, the patent owner and other parties with standing derived from the patent can petition the competent commercial court judge to authorize urgent measures (inquiries or investigations) to take evidence substantiating whether exclusive rights granted under the patent are being infringed.

Such urgent inquiries and investigations, regulated by Articles 123 et seq. of LP-2015, are intended to assist interested parties having prima facie evidence of infringement in seeking evidence that their exclusive rights are in fact being infringed.

The purpose is to avoid a long and costly trial over potential patent infringement when it cannot otherwise be substantiated by the prospective plaintiff.

Since these measures are preliminary to judicial action, their authorization is subject to requirements designed to protect the alleged infringer against unfounded petitions.

Accordingly, before deciding on such a petition, the judge may order such reports and investigations as they deem necessary.

These measures may only be authorized, moreover, when it can be presumed, under the circumstances in the case, that the substantiation of patent infringement will not be possible without them.

In authorizing such inquiries or investigations, the judge must fix a deposit to be made by the petitioner to meet any damage or prejudice they might cause.

To avoid the possible elimination of any traces of infringement, these measures are conducted without giving prior notice to the persons targeted.

To ensure protection for the trade secrets or confidential information of the prospective defendant and avoid the possibility that acts of unfair competition might subsequently be committed by the petitioner, the latter does not take part in the enforcement of these measures.

Such inquiries or investigations are ordered by the judge with the participation of one or more experts they may designate for the purpose. Having subsequently been informed of the results, and having heard the arguments of the petitioner, the judge then determines whether evidence of the alleged infringement has indeed been substantiated.

If they deem it has not, the inquiry or investigation is closed and a separate record of it is made (and kept secret: the petitioner is notified that they will not be informed of the results).

Conversely, if a presumption of patent infringement is found to be warranted, the judge, assisted by the designated expert or experts, must make a detailed inventory of the machines, equipment, products, processes, facilities or activities by means of which such infringement was presumably carried out.

A copy or certification of the findings is then provided to the petitioner solely for use in pursuing the infringement action, after which the petitioner has 30 working days to do so. If the petitioner fails to bring the infringement action within that time, the findings resulting from this process cease to have effect and may not be used for any subsequent judicial action.

If the findings are rejected, or the infringement action is not filed within the allotted time, the person targeted by these measures can request appropriate compensation for expenses and damage incurred, including loss of income, to be charged against the deposit, all without prejudice to such additional liability as the petitioner may have incurred.

12.6.3 Venue, jurisdiction and case assignment rules

12.6.3.1 Infringement and invalidation actions

Since September 1, 2004, with the entry into force of Organic Law No. 8/2003,⁷¹ jurisdiction for patent infringement, invalidation and other related civil litigation in Spain, has been assigned to the commercial courts located in the autonomous community seats of the country’s High Courts of Justice.⁷²

For cases concerning industrial property, on the other hand, jurisdiction was significantly restructured after the entry into force of current patent law, LP-2015, on April 1, 2017.

According to Article 118 of LP-2015, objective jurisdiction for industrial property litigation has been assigned to commercial courts in autonomous community seats of High Courts of Justice, but not in every autonomous community – only those which the General Council of the Judiciary has designated for such exclusive jurisdiction.

To date, the General Council of the Judiciary has exclusively assigned specialized jurisdiction for industrial property cases to commercial courts in Barcelona, Madrid, Valencia, Las Palmas, Bilbao, La Coruña and Granada.

Territorial jurisdiction for those cases is assigned to a commercial court specialized in that area according to the domicile of the defendant, as described above, or in its absence to the domicile of the defendant’s authorized representative in Spain if such a specialized commercial court is located there.

Absent courts specialized in industrial property at both venues, then the plaintiff can choose any commercial court recognized as competent for industrial property cases.

For industrial property infringement cases, the court specialized in such cases in the autonomous community where the alleged infringement has either occurred or produced effects may be chosen as competent, at the plaintiff’s discretion.

Absent such courts in those venues, any commercial court assigned jurisdiction for industrial property cases by the General Council of the Judiciary may be chosen as competent, also at the plaintiff’s discretion.

Jurisdiction for all appeals against commercial court decisions in any province is assigned to the corresponding Provincial Court specializing in such appeals.

12.6.3.2 Appeals against SPTO decisions

The reform of Organic Law No. 7/2022, which entered into force on January 14, 2023, assigned, as a sole instance, jurisdiction for appeals against SPTO industrial property decisions marking the exhaustion of administrative remedies to the commercial sections of certain Provincial Courts.

More specifically, such competence was assigned to the commercial court located in the seat of the High Court of Justice in the autonomous community where the plaintiff is domiciled, if assigned jurisdiction for industrial property cases by the General Council of the Judiciary, or in the absence of such a court, where the plaintiff’s authorized representative in Spain is domiciled.⁷³ Alternatively, the specialized sections of the Provincial Court in which the headquarters of the SPTO are located may be chosen as competent, again at the plaintiff’s discretion.⁷⁴

12.6.4 Provisional measures

Patent infringement proceedings provide a classic example of how provisional measures are requested, granted and used. In Spanish law, the general rules governing provisional measures contained in the LEC are supplemented where necessary by special rules in LP-2015.⁷⁵

12.6.4.1 When provisional measures may be requested

Provisional measures may typically be requested in Spanish proceedings when an action is filed but also before or after the start of proceedings, during the substantiation phase. They may also be requested after the judgment is issued, pending appeal.

As a general rule, provisional measures are requested when the action is filed, but a prospective plaintiff may do so beforehand by invoking and substantiating urgency or necessity.

The aim in requesting a provisional measure before the action is filed is typically to put an immediate and provisional stop to suspected infringement at a time when it is still not possible or practically feasible to formalize a duly grounded complaint, accompanied by such expert reports or documents as may be necessary to support an infringement allegation.

Provisional measures may sometimes be requested after the action is filed, when warranted by related facts or circumstances (typically, developments of which the plaintiff was not aware earlier or which may aggravate the damage being incurred).

Subject to certain conditions, provisional measures may be requested even after a judgment has been rendered in the first instance, pending the formalities required for appeal.⁷⁶

As a particularity in patent matters, provisional measures may also be requested at this stage where a sentence has been imposed, to ensure the enforcement of the decision.⁷⁷

12.6.4.2 Hearing with the defendant

As a general rule, whether requested before, simultaneously with, or after the action is filed, a hearing must be held with the defendant before a provisional measure is ordered. The parties must then appear so that the defendant can make oral arguments to defend themself against the provisional measure.

A court may exceptionally order a provisional measure without a prior hearing with the defendant, if requested by the plaintiff on substantiated grounds of urgency, or alternatively, if the prior hearing would have the effect of compromising the effectiveness of the provisional measure.

Here, the urgency is linked to the immediate need to adopt the provisional measure as its effectiveness could be compromised by the delay required to summon the defendant.

This is particularly the case where it is demonstrated that the mere prospect of holding the hearing would enable the defendant to alter their behavior so as to defeat the provisional measure’s purpose.

Provisional measures ordered without a hearing for the defendant can be opposed in writing. The parties can then be summoned to a hearing where the court can review its previous decision in the light of the defendant’s arguments.

Given the potential impact of provisional measures in the field of patents, especially in the case of preliminary injunction, LP-2015 provides for a special mechanism called “protective letters”, to avoid the possibility of provisional measures being ordered without a prior hearing (see Section 12.6.4.5).

12.6.4.3 Types of provisional measures and preliminary injunction

The specific types of measures a judge may order under LP-2015 include the following: cessation or prohibition of acts potentially infringing the petitioner’s rights when there is prima facie evidence that such infringement is imminent; the detention and storage of goods presumably infringing a patent owner’s rights, and of the means exclusively used for their production or for carrying out a patented process; the requirement of a security deposit to cover any damages awarded by the court; and the entry of appropriate registry notations.

Preemptive provisional measure often make the most sense in industrial property litigation and are explicitly provided for, in general terms, in Article 726(2) of the LEC, and more specifically in Article 128(1) of LP-2015. These consist in particular of cessation or prohibition of particular acts, so as to ensure the effectiveness of the rights at issue, not only in terms of the judgment to be pronounced but also by avoiding the prolongation of a situation that appears prima facie to be unlawful and unjust and the aggravation of its consequences for the plaintiff. These measures will also help to ensure the effectiveness of the judgment ultimately rendered by safeguarding the plaintiff’s potential right to compensation (the implicit intent of Article 726(1) of the LEC). They may also be justified by the legitimate aim of not permitting the defendant to benefit from potentially infringing activity while the case is being adjudicated.

12.6.4.4 Requirements for the adoption of provisional measures

The requirements for adopting provisional measures in civil proceedings are clearly set out in the LEC. The measures must be aimed exclusively at guaranteeing the effectiveness of the prospective judgment – as both necessary and sufficient to protect the right at issue – and providing the least burdensome solution (proportionality) for the case concerned.⁷⁸ In addition, the petitioner must demonstrate the risk deriving from procedural delay (periculum in mora) and the likelihood of success on the merits (fumus boni iuris), and must make a security deposit to compensate for damage potentially to be caused by the provisional measure.⁷⁹ All of these requirements must be met for the provisional measures to be ordered.

12.6.4.4.1 Risk deriving from procedural delay

Periculum in mora, the risk deriving from procedural delay,⁸⁰ an essential requirement for provisional measures, must be assessed when there is a reasonably foreseeable and objective risk that the defendant may take advantage of procedural delay to render ineffective such protective measures as may eventually be ordered, or that a situation may arise in the interim preventing or hindering the effectiveness of remedies ultimately awarded. In a scenario where exclusive rights are being unlawfully infringed, the risk of procedural delay is clear. Prolonged proceedings may in that case enable the defendant to persist in the infringing conduct and aggravate the damages caused to the plaintiff, not only commercially and economically but possibly in other ways (moral or reputational damage, for instance). Such monetary compensation of whatever amount as may be awarded subsequently could then prove inadequate to remedy the detrimental consequences of infringement, if permitted to persist through conclusion of the proceedings. The final result could then prove a belated and ineffective solution. To decide otherwise could aggravate damage the plaintiff is attempting to stop.

12.6.4.4.2 Likelihood of success on the merits

Fumus boni iuris, the second essential requirement for provisional measures,⁸¹ entails a provisional but relatively in-depth analysis, according to the circumstances in the case and based solely on information available at the time (which can be expanded during the evidentiary phase of proceedings), of prima facie evidence supporting the plaintiff’s allegations and therefore justifying protective measures. Such an analysis needs to accompany the application for provisional measure to demonstrate that the plaintiff’s case is well-founded.

12.6.4.4.3 Security deposit, counter-guarantee or substitutionary guarantee

LP-2015 contains special rules⁸² on the security the plaintiff must provide to compensate for damage potentially to be caused by the provisional measure should the suspicion of infringement prove unfounded. They also allow for a counter-guarantee being required to ensure that the defendant can later resume their commercial or industrial activity – but only where the provisional measure is sufficiently restrictive to justify such an exceptional solution.⁸³

12.6.4.5 Provisional measures and protective letters

A unique situation that may arise in patent litigation is the possibility that persons apprehensive at the prospect of provisional measure without a prior hearing can preemptively submit a “protective letter” to the court stating what their arguments would be should a provisional order be requested.⁸⁴ If a provisional order is requested after the judge receives such a letter (within three months) the judge can then consider the arguments of both parties and reach a decision directly. The intent of this provision is to ensure that the judge has at their disposal as much information as possible, before taking a decision that may involve a restriction of commercial or industrial activity, so that their decision on the matter may be the most appropriate one.

12.6.4.6 Effects of provisional measures on subsequent judgments on the merits

If, after a provisional measure has been granted, a judgment in the first or second instance absolves the alleged infringer, the provisional measure is lifted ex officio, unless the plaintiff requests otherwise or requests alternative measures. The judge then considers and decides on that request after hearing from the other party.

If the judgment absolving the alleged infringer becomes final, any remaining measure is lifted ex officio, and the defendant may seek compensation for damage incurred.

12.6.5 Amendment of the patent

The obligation to allow owners to limit their patents, at least in the case of European patents validated in Spain, was imposed by Article 138(2) of the EPC, as revised in 2000. Under that provision, the owner of a European patent has the right to amend and limit the patent’s claims during proceedings on its validity.

Given the absence of any domestic provision on this point, no such right was recognized for national patents; nor were there any procedural rules for the amendment of European patents validated in Spain. Court rulings were therefore initially left to each judge’s discretion in such cases.

That omission was only partly corrected by the patent law now in force.

12.6.5.1 Patent amendments in judicial proceedings

Patents can be amended during the course of either invalidation or infringement proceedings.

In the case of invalidation proceedings, the patent owner can opt, on a principal or subsidiary basis, to limit the patent by amending its claims.

In this scenario, the owner needs to present and justify a new set of claims to serve as the basis for further proceedings. The plaintiff seeking invalidation must then adjust their arguments so as to either maintain or revise their request for invalidation in light of the limitation proposed.

As explained in Section 12.5.3 in more detail, requests for invalidation of a patent, entirely or partially, are also a typical defense against actions for patent infringement.

The defendant may question the validity of the patent by means of an exception, to have the action simply dismissed, or by filing a counterclaim to have the patent explicitly declared invalid. When such an exception is invoked, the patent owner may request that it be treated as a counterclaim.

If the defendant responds, on either a principal or subsidiary basis, by invoking invalidity, the patent owner can then opt to limit the patent by amending its claims – bringing and justifying a new set of claims in response to the counterclaim (or invalidity defense, as the case may be). The owner must also explain, and possibly prove, how the proposed limitations affect the infringement action.

In the light of a patent amendment made in response to either a counterclaim or a defense, it is then up to the petitioner for invalidation to maintain or amend their petition in light of the proposed limitation.

12.6.5.2 Effect on the proceedings of patent amendment outside the process

A patent under litigation for infringement or invalidity can also be amended outside the process. This may happen when the patent owner applies to the SPTO for an amendment; when an opposition or limitation procedure or an appeal is filed, in the case of national patents; or when procedures are filed before the EPO, in the case of European patents. Amendments may also be made in proceedings before another court.

When a patent is amended outside the process in response to changed circumstances, the patent owner may request that the amended version serve as the basis for court proceedings, which can significantly alter the course of those proceedings.

Spanish procedural rules on this point remain limited, with article 120(4) of LP-2015 providing simply that the judge or court must entertain allegations from the other parties, which can create a range of problems, in particular, the need for both the plaintiff and the defendant to provide new expert evidence analyzing the amendments to the patent, as well as the possibility for the parties to dispute such new evidence. The problem is exacerbated by the fact that this amendment is not limited in time to the initial phase of the proceeding, and may therefore occur at a late stage of the process.

12.6.6 Gathering of information

Without prejudice to the information provided in Section 12.6.8 on confidentiality below, the LEC expressly and extensively deals with parties’ ability to collect information from each other and from third parties in support of their rights.

12.6.6.1 Preliminary proceedings

In the framework of preliminary proceedings,⁸⁵ prior to and in preparation for court proceedings, a party intending to bring legal action for the infringement of an industrial property right can apply for the exhibition of banking, financial, commercial or customs documents issued within a specific period of time and assumed to be in possession of whom may be sued as liable.

This application must be accompanied by prima facie evidence of the existence of the infringement, which may consist of the presentation of a sample of the specimens, goods or products in which the infringement has occurred.

The applicant may request that the Clerk issue a testimony of the exhibited documents if the served party is unwilling to hand them over for incorporation to the proceedings.

12.6.6.2 Exhibition and production of documents during the proceedings

Once the trial has begun, the plaintiff may seek exhibition of the same documentation described for preliminary proceedings above.

In addition, the LEC establishes a duty of exhibiting documents amongst the parties. Each party may thus seek that the other parties exhibit any documents that are not in their possession and which refer to the matter at issue in the proceedings or the value of the evidence.

There are strict consequences for unjustified failure to comply with this duty, up to the point where a court may, taking into consideration other evidence, attribute probative value to the version such document’s contents may have given, or to a non-certified copy of such document if filed by the applicant for exhibition.

The exhibition of documents by third parties may also be allowed, but subject to greater restrictions.

The exhibition of documents in the possession of non-litigant third parties may only be sought where the court deems that knowledge of such documents is important for the purposes of issuing judgment. The judge must also hold a prior hearing with the third party concerned.

12.6.7 Taking of evidence

12.6.7.1 Admissible evidence

There is nothing particular to patent proceedings in terms of the evidence parties may use to prove the facts on which their arguments are based, all of which is regulated by the LEC.

Evidence is taken by the following means: the questioning of opposing parties, the production of public or private documents, the presentation of expert testimony or reports, the taking of evidence by the court and the questioning of witnesses.

Any means to record words, sounds and images are also admitted, as well as any instruments that allow words, data and mathematical operations carried out for accounting purposes or any other purposes, which are relevant to the proceedings, to be saved, known or reproduced.

The foregoing list of evidentiary possibilities is not closed. Other forms of evidence may also be used if they serve to substantiate facts relevant to the case.

Facts in dispute can also be established by means of judicial presumptions or rebuttable legal presumptions.

Judicial presumptions are those where a judge, based on an admitted or proven fact, can presume the certainty of another fact if there is a precise and direct link between the admitted and presumed facts according to normal human judgment.

Legal presumptions are those established in law for presumed facts that need not be proven by the party they benefit. Unless expressly indicated otherwise, legal presumptions can be rebutted by evidence to the contrary.

A typical example of a legal presumption in the field of patents, as a consequence of Article 34 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), is found in Article 69(2) of LP-2015, which provides that where a patent concerns a process for the manufacture of new products or substances, it shall be presumed, barring evidence to the contrary, that any product or substance with the same characteristics has been obtained by using the patented process.

Given the object of patent proceedings, expert testimony is essential to ascertaining the infringement or validity of a patent, as discussed in Section 12.6.7.2.

12.6.7.2 Expert opinions

In judicial proceedings relating to patents, given their technical nature, expert testimony represents an indispensable form of evidence in determining whether a patent has been infringed or meets the requirements for validity.

An expert report, while obviously no substitute for a judicial assessment, does provide critical input enabling a judge, after also considering other evidence, to reach their own conclusions.

In Spain, reports may be prepared by experts designated by the parties, or by the judge when a litigant so requests, or may be provided pro bono.⁸⁶ When designated by the judge, the expert is selected from one of the lists provided annually by various professional associations and cultural and scientific academies and institutions concerned with the study of subject matter to be covered by the expert opinion. The first designation from each list is selected by drawing lots followed in turn by those next on the list.

In patent litigation, both parties generally provide expert reports prepared by their own designated experts, but there is no impediment to either the plaintiff or defendant providing an expert report prepared by an expert of their choice, and the other party requesting a report from a court-designated expert.

The plaintiff and defendant must submit the reports prepared by their own designated experts together with their claim or defense, or counterclaim as the case may be.

As an exception, the defendant or plaintiff may respond to a claim or counterclaim but provide the expert opinion later, provided the impossibility of submitting it simultaneously with the response can satisfactorily be demonstrated.

These provisions are stricter in the case of patent litigation than in other general cases. The general regime is more flexible as it allows the subsequent submission of expert reports not only by the defendant but also by the plaintiff, and it is sufficient that it was not possible for them to provide the expert opinions with the claim or the response.

Where later submission of the expert reports is allowed, parties must submit them as soon as possible, and at least five days before the preparatory hearing discussed in Section 12.6.9.1.4.

Parties may also submit new expert reports as necessary or useful in the light of subsequent allegations or arguments, for the defense or during the preparatory hearing. Such reports must be submitted at least five days before the start of the trial.

If the complaint is for infringement and the defense is based on the patent’s invalidity, for instance, the plaintiff might then submit an expert report supporting the patent’s validity.

Expert reports are submitted in writing, but parties may request an expert’s presence during oral proceedings, where considerable latitude is often allowed.

Expert participation during the trial may consist of:

• explanations for the expert’s opinion, or elaboration where necessary on specific points therein;

• responses to questions and objections with respect to method, premises, conclusions and other aspects of the opinion;

• a full presentation of the opinion, where written content may need to be supplemented by additional documents or materials to fully convey the expert’s point of view;

• responses to requests for a wider opinion, elaborating on the feasibility and utility of providing one, on additional related points to be included and on the time needed to prepare it; or

• a critique of one expert’s opinion by another for the opposing party.

The judge may also take an active part in questioning experts and requesting explanations for their opinions; the judge may not, however, order an expanded opinion ex officio.

As a particular aspect of cases involving an action for patent invalidation, and where the parties’ expert reports are contradictory on specific points, the judge may order, either ex officio or at a party’s request, a written expert report from the SPTO on those specific points.

The author of the SPTO report may then be called by the judge to testify on its content.

12.6.8 Confidentiality

The Spanish legal system places great importance on protecting the confidential information of parties to judicial proceedings.

The provisions generally applicable on this point are contained in Law No. 1/2019, of February 20, 2019, on Trade Secrets.⁸⁷

That Law provides for various measures to protect the confidentiality of such trade secrets where necessary, including:

• restricted access to any document, object, material, substance, electronic file or other media containing information that may partially or fully constitute a trade secret;

• restricted access to hearings, and to recordings or transcriptions thereof, potentially revealing information that may partially or fully constitute a trade secret;

• the preparation of a redacted, nonconfidential version of the judicial decision issued in such a case, concealing or removing information that may constitute a trade secret, to be made available on an unrestricted basis.

Article 122 of LP-2015 also contains a specific provision on confidentiality in connection with preliminary proceedings or measures for the seizure of evidence. In that connection, where a court has found it necessary to shed light on the facts in a case by gathering information considered by the court to be confidential in nature, the court must also take the measures necessary, if so requested by the parties, to protect the confidentiality of the information gathered and effectively supervise the use of that information by the party having requested it.

12.6.9 Proceedings

12.6.9.1 Infringement and invalidity proceedings

The ordinary proceedings to substantiate patent litigation entail the submission of both written and oral evidence.

The first phase in these proceedings, focused on allegations, is dominated by written submissions and starts with the filing of a formal claim.

12.6.9.1.1 Statement of claim

Infringement or invalidation proceedings start with a written claim generally similar to those filed in ordinary trials on other matters.

The statement of claim must provide the plaintiff’s and the defendant’s identifying information and circumstances, domicile, residence or place where they can be located. It must then enumerate and separately present the facts and legal arguments supporting the claim and clearly state what is being asked of the court.

The claim must be accompanied by documentation supporting the claim, including the opinions of experts designated by the plaintiff, as explained in Section 12.6.7.2.

12.6.9.1.2 Statement of defense

The defendant’s response to the plaintiff’s claim also resembles those presented in most other ordinary trials, consisting of a written statement denying or admitting the facts as presented by the plaintiff.

The defendant must also indicate procedural exceptions and other allegations that need to be considered as part the proper adjudication of any case.

Patent litigation sets apart from other proceedings in a longer time limit for responding to the plaintiff’s claim: two months,⁸⁸ compared to 20 working days for most ordinary proceedings.⁸⁹

Another particularity, where the validity of a patent is being challenged, as mentioned in Section 12.6.5, is that the plaintiff can amend their claim during the substantiation phase by opting to limit the patent and present a new set of claims. A patent can also be amended out of the proceedings owing to a change in circumstances, and the patent owner may then request that the amended patent serve as the basis for court proceedings.⁹⁰

Where proceedings have been initiated by an action for invalidity, the amendment of a patent claim to limit the patent must take place during consideration of the defendant’s (the patent owner’s) response to the plaintiff’s claim (that of the party alleging invalidity).

12.6.9.1.3 Counterclaim

Spanish procedural rules permit defendants to respond to a plaintiff’s claim not only by defending themselves but also by making their own claims against the plaintiff.⁹¹

Such counterclaims are admissible, however, only if made in connection with the initial claim.

In patent litigation, as explained earlier, that connection is clear when the claim is for infringement, the defendant denies the infringement and then files a counterclaim for invalidation of the patent.⁹² The connection can also be established when after the initial claim is for invalidity, the defendant denies the invalidity and files a counterclaim for infringement.

The patent owner can also limit the patent by amending its claims when responding to the counterclaim in which the defendant accused of infringement requests the invalidation of the patent that the initial plaintiff considers infringed. See Section 12.6.5 for more details.

Once a response has been made to the initial claim, and to the counterclaim as the case may be, the written phase of proceedings comes to a close and subsequent proceedings are predominantly oral.

12.6.9.1.4 Preparatory hearing

Once the claim or, as the case may be, the counterclaim has been answered, the parties are summoned to appear before the court for a preparatory hearing.

This hearing is aimed essentially at reaching an agreement between the parties to deal with procedural issues, delineate the object of the proceedings and decide on what evidence will be admissible (for an immediate ruling by the judge after hearing proposals from each party).

12.6.9.1.5 Trial

Trial is where the evidence ruled admissible is presented and debated before the court.

As described in Section 12.6.7, the range of admissible forms of evidence is quite broad and may consist of statements by the parties, witness testimony, oral expert reports, dissenting expert opinions, the taking of evidence by the court, and in some cases recorded words, images and sounds.

Following this evidentiary phase, the parties present their conclusions. During this phase the attorneys for each party present oral statements on the facts in dispute and assessments of the evidence and legal arguments presented in support of their respective claims. This concludes the proceedings prior to the court’s judgment.

It is not uncommon for patent litigation to be scheduled over several sessions on successive days.

12.6.9.1.6 Judgment

Following the trial, if there is no agreement to hold final proceedings,⁹³ the court has 20 days to issue its ruling, which must be in writing.

Judgments issued on patent cases generally resemble those issued in other cases, though sometimes entailing difficulties inherent in the subject matter concerned.

The judgment must include an analysis and assessment of the facts based on the evidence presented and cite legal norms and principles in support of the judgment’s dispositive provisions.

The judgment’s dispositive provisions must be numbered and formulated as acceptance or dismissal of the parties’ respective arguments.

12.6.9.2 Proceedings against SPTO decisions

Appeals filed against SPTO decisions are substantiated by means of a verbal proceeding, subject to special provisions contained in Article 447bis of the LEC.

A verbal proceeding consists of a combination of written and oral proceedings.

Very briefly, following an SPTO decision marking the exhaustion of administrative remedies, these verbal proceedings are initiated by a written appeal to the Provincial Court having jurisdiction to hear it. The case file is then obtained from the SPTO, the parties are summoned and the appellant is given a deadline for the formalization of their appeal.

The SPTO and other interested parties are then invited to respond.

Following the written allegations phase, if one of the parties so requests, the parties are summoned to an oral hearing before the court to consider the appellant’s allegations and hear allegations from the other parties.

Following that hearing, or in its absence, the proceedings conclude in preparation for the judgment.

12.6.10 Alternative dispute resolution

Generally speaking, except where prohibited by law, or limited in the general public interest or in the interests of third parties, the LEC offers parties the option of recourse to mediation or arbitration for disputes at issue.

When parties in an ordinary trial are summoned to the preparatory hearing they must be informed of the possibility of such recourse to reach a negotiated solution to the dispute. The parties indicate their decision on that point and the reasoning behind it during that same hearing.

At the start of the preparatory hearing, the court may invite the parties to pursue an agreement through mediation or other means and thus dispense with the court proceedings. The court may urge them to attend a briefing on that possibility.

Failing such an agreement the hearing will continue, and after dealing with procedural issues and delineating the facts in the case, the court may urge the parties or their representatives and their attorneys to reach a settlement of the dispute.

In addition to its general provisions, LP-2015 expressly provides for alternative resolution mechanisms for patent disputes, consisting of mediation and arbitration. It also provides for prior conciliation in cases concerning the inventions of employees.

12.6.10.1 Mediation and arbitration

Interested parties may resort to mediation or submit their patent-related disputes to arbitration for matters defined by law as subject to individual discretion.

In the context of patent grant, opposition and appeal proceedings, disputes relating to the fulfillment of requirements for patents to be granted and maintained, and to remain valid, are not matters of individual discretion and thus fall outside the scope of mediation and arbitration.

In the case of arbitration, a final arbitration award has the effect of res judicata, and the SPTO is bound to perform the steps necessary to execute that decision.

Similarly, in the case of mediation, an agreement signed by the mediator and the parties, once recorded as a public deed or confirmed by a court, becomes an enforceable right, and the SPTO must be notified accordingly for the enforcement of that right.

12.6.10.2 Conciliation in respect of employee inventions

As a step preliminary to judicial action based on the applicable governing provisions, disputes relating to inventions in the context of an employment or a service contract relationship may be submitted, if the parties so agree, to a conciliation process before the SPTO.

Disputes subject to such prior voluntary conciliation may relate to patent ownership or economic compensation that may, under certain circumstances, be accorded to the inventor. More specifically, in accordance with article 15(2) of LP-2015, an employee is entitled to compensation, even where the patent is legally owned by the enterprise employing them,⁹⁴ when the personal contribution made by the employee and the importance of the invention for the enterprise clearly exceed the explicit or implicit content of the employment contract or relationship.

If the employee is the legal owner of the patent,⁹⁵ but where knowledge gained while employed by the enterprise has predominantly contributed to obtaining the patent, or where means provided by the enterprise have been used to obtain it, the enterprise is entitled to assume ownership of the invention or to reserve the right to use it in exchange for fair economic compensation.⁹⁶

Public universities and public research institutes may decide to assume ownership of inventions conceived by researchers in their employment. If they do so, the researchers concerned are entitled to participate in the profits the entities earn from exploiting, transferring or assigning their rights to the inventions. If disputes in this regard are submitted for conciliation, a conciliation committee, composed of an SPTO expert serving as chairperson and two other members selected by each of the parties concerned, is assembled to facilitate an agreement and thereby avoid litigation.⁹⁷