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.