An International Guide to
Patent Case Management for Judges

12.7 Patent protection through civil proceedings

Patent owners enjoy powers inherent in their exclusive legal rights.⁹⁸ They have the right in particular to prevent third parties from undertaking without their consent such activities as manufacturing, offering for sale, putting on the market or using the product that is the subject matter of the patent, or importing or possessing it for one of the above-mentioned purposes. They can also prevent third parties from making use of a process that is the subject matter of a patent, or from offering such use, knowing or circumstances making it obvious, that use of the process without the patent owner’s consent is prohibited. They can likewise prevent third parties from offering for sale, putting on the market or using the product directly obtained by the process that is the subject matter of the patent, or importing or possessing it for any of the above-mentioned purposes.

Patent owners who have become aware that their rights are not being respected may ensure their enforcement by means of legally sanctioned judicial action against infringements of this category of exclusive rights. In Spain, LP-2015 includes special regulations to align Spanish law with the requirements of EU Directive on the Enforcement of Intellectual Property Rights (EU Enforcement Directive)⁹⁹ and with the TRIPS Agreement.

The means of protecting patent rights explicitly catalogued in Spanish law (Article 71 of LP-2015) consist of petitions for court orders for the cessation of infringement activity and the effects thereof, including compensation for damages and prejudice incurred.

12.7.1. Actions for the prevention of patent infringement

Cessation and prohibition represent the archetypical means of defending patent rights, designed to prevent or stop intrusions into the exclusive domain reserved for patent owners. Specifically, two main types of actions of this nature can be distinguished, which are the following:

1. 1. Actions for the cessation of patent infringement call on the court to put a stop to ongoing patent infringement and prohibit future recurrences. The factual premise for the admissibility of such an action is that acts of infringement are currently underway (manufacture, sale, importation, etc.) or about to resume or be repeated. This factual premise is purely objective, based on the actual occurrence of activity within a sphere exclusively reserved for the patent owner, irrespective of such subjective elements as culpability. Defendants need not be aware, for instance, that their conduct constitutes infringement to become passive targets of infringement lawsuits. What matters is stopping any form of infringement activity.
2. 2. Actions for the prohibition of acts that would constitute patent infringement are intended to prohibit conduct on the part of the defendant that has been identified as potentially infringing, even when such infringement, though imminent, has not yet occurred. The premise for admitting this form of action is an existing risk of something about to occur, something objectively predictable: the initiation of infringement activity.

Spanish law admits the possibility to anticipate cessation and prohibition orders, albeit of provisional duration, in response to an application for provisional measure. In any case, whether or not this possibility of this interim protection has been pursued, these are requests that the plaintiff may submit to the court for it to rule on in its final decision on the patent litigation.

Spanish patent law, in article 72(2), consistent with the EU Enforcement Directive, permits applications for cessation and removal filed against a patent infringer to be extended to intermediaries whose services are being used by a third party to infringe another’s industrial property rights (even if the acts of such intermediaries do not in themselves constitute infringement). The Court of Justice of the European Union (Judgment of July 12, 2011, C-324/90, among others) has stressed that the measures to be imposed on intermediaries must be effective and dissuasive against future infringement, but also fair, proportionate and not excessively costly. Nor must they entail a general monitoring obligation in respect of third parties. In this regard the special regulations contained in LP-2015 must be coupled with legislation on services and electronic commerce in an information society (in Spain, Law No. 34/2002, of July 11, 2002, on information society services and electronic commerce).

Once the final judgment ordering cessation of the patent infringement activity has been issued, the law provides for a guarantee mechanism to motivate defendants to comply with the order or suffer economic consequences if they do not.

The court imposes a coercive indemnity in favor of the plaintiff, commensurate with the circumstances, consisting of an amount to be paid for each day that the infringement does not effectively cease. Neither the ultimate amount of this indemnity, which will be added to the general compensation that the plaintiff is entitled to receive, nor the date from which the obligation to compensate is reckoned, are determined until enforcement of the judgment commences. Thus, voluntary compliance with the judicial decision enables the defendant to avoid a costly penalty.

12.7.2 Compensation for damages and prejudice

Infringements of exclusive patent rights entitle the injured party to compensation for the detriment suffered as a result. Given its impact on the parties concerned, and importance in principle in the context of patent disputes, the compensation to be ordered requires especially careful consideration. Plaintiffs often find it useful to support their claims for compensation with expert opinions, the preparation and subsequent assessment of which entail the considerations described below.

12.7.2.1 Requirements for generating the obligation to compensate

In certain cases, as defined by law, the basis for compensation is purely objective. But in others, the amounts to be assessed are a function of culpability.

If the infringement consists of a person manufacturing or importing a patent-protected object or using a patented process without the patent owner’s prior consent, that person must in any case be held liable for the damage and prejudice caused.¹⁰⁰ The only condition required to establish liability is an objective one: the person must have committed the conduct described to incur the obligation to compensate. According to case law on this point,¹⁰¹ the manufacturer’s awareness of the invention through the public registry must be presumed.

On the other hand, if the infringement consists of any act of exploitation other than those indicated in the previous paragraph, an additional premise will determine whether compensation may be ordered: the person responsible must have acted knowingly, culpably or negligently. In this scenario, the date from which the obligation to compensate is reckoned is that on which the patent owner requests cessation of the infringing activity, such that the infringer has then been notified – of the existence and nature of the exclusive right and of its infringement – and yet has taken no heed of those facts. This represents a classic case of knowing infringement. The infringer may then avoid a compensation order by heeding the patent owner’s reasonable and justified request, but not if they resist that request and persist in their conduct.

12.7.2.2 Extent of compensation

Compensation for damage and prejudice may include the actual damage suffered by the patent owner (or licensee as the case may be) and the loss of revenue resulting from the infringement of an exclusive right.¹⁰² The damage must in principle be established by the plaintiff. However, as explained in STS 263/2017, courts are authorized in each particular case to assess whether the damage concerned has necessarily resulted from the unlawful conduct.

Damages can also be claimed for investigation costs incurred to provide reasonable evidence for the court that the infringement alleged has in fact been committed. Such costs may include those incurred to purchase an infringing product for analysis, to obtain registry certificates and to pay for reports by hired private detectives.

The patent owner may also require compensation for the prejudice suffered as a result of the loss of reputation of the patented invention caused in any way by the person infringing the owner’s rights, in particular through defective manufacture or unsatisfactory presentation of the invention on the market.

The remuneration the patent owner has received from other persons working the same invention in any other manner must be deducted from the compensation to be paid by the person who has produced or imported the invention without the owner’s consent.

12.7.2.3 Criteria for the calculation of lost profits

The party injured by the infringement can apply rules facilitating the calculation of compensation claimable from the infringer using one of the following methods, at the injured party’s discretion (one or the other must be chosen; they may not be combined).

The first method consists of calculating the negative economic consequences suffered, in one of two ways: (a) based on the profits the injured party would foreseeably have earned from the patented invention without competition from the infringing version; or (b) based on the profits earned by the infringer from working that patented invention. The profits are calculated by subtracting from the revenues generated or anticipated, the costs directly connected with the manufacture and/or sale of the product subject to the exclusive right – but not fixed or structural costs unrelated to exploitation of that product, since the aim is full compensation for the injured party. The deductible expenses are those directly and exclusively dedicated to the infringing activity, that is, costs that it would have been necessary to incur directly and exclusively to earn the profits associated with the infringement of another’s right. What must not be deducted are structural costs not directly attributable to exploitation of the good or service targeted by infringement but which rather contribute, on a shared basis, to sustaining the overall activity of the enterprise.

The calculation of lost profits may also take into account, to the extent deemed reasonable by the court, the profits obtained from working other objects of which the patented invention constitutes an essential part from a commercial point of view. The invention is deemed to be an essential part of goods from a commercial point of view when its incorporation constitutes a determinant factor in the demand for those goods.

The second method for calculating the compensation claimable from the infringer is based on the possibility of requiring the payment of hypothetical royalties. This is a legal fiction that provides a reasonable means of quantifying the profits lost by the plaintiff, based on the amount the person infringing the patent would have paid to the owner for a license allowing him to work the patent legally. In fixing the amount, special consideration has to be given, inter alia, to the economic importance of the patented invention, the remaining term of the patent at the time infringement commenced and the number and type of licenses granted at that time. A fair price for such royalties, based on a proven, market-based approach to estimating such a price, may be taken into account in determining this amount.

Both of these methods are moreover compatible, irrespective of the applicable regulatory text, with claims for compensation of moral prejudice (consistent with the interpretation of the Court of Justice of the European Union in its judgment of March 17, 2016 (C-99/15) with respect to Article 13 of the EU Enforcement Directive) which are to be admitted even where economic prejudice has not been proven. And the right to file such claims is not exclusive to natural persons, case law having found that legal persons may also claim moral damages in cases where their prestige has been affected, since the right to self respect and a good name or reputation is not exclusive to natural persons.¹⁰³

12.7.3 Other actions for the enforcement of patent rights

Other actions specifically provided for in Spanish law may also be brought to address the consequences of infringement, as described below.

1. 1. Actions designed to erase undesirable situations created by infringement, making the effects generated in commercial markets disappear to the extent possible, and at the infringer’s expense. These include applications for: the detention of objects produced or imported in violation of patent rights and of means exclusively dedicated to the production of such objects; measures against the use of patented procedures;¹⁰⁴ the transformation of detained objects or means, or their destruction when necessary to prevent infringement;¹⁰⁵ and even the transfer of ownership of those objects or means (with compensation in that case for their value).¹⁰⁶
2. 2. Actions to publicize judgments against patent infringers, at the latter’s expense, in the form of announcements and notifications issued to interested parties.¹⁰⁷ The aim here is not retribution or even punishment for the infringer, but exclusively to contribute on a proportionate basis to correcting the alteration produced in commercial traffic and re-establishing, where necessary, the plaintiff’s former market position.

While not explicit in the legislation, the regulatory framework also allows for other, less typical means of supporting patent owners. A simple declaration can be issued proclaiming that infringement has been committed against exclusive patent rights. This can be done on a one-off basis, following a specific dispute, if the aim is to dispel controversy and restore legal certainty. It is also often done as a prelude to other measures being taken in response to an infringement – though not indispensable where clearly implicit in the measures themselves.

12.7.4 Types of infringement actions

Infringement actions can be filed individually, limiting the specific exercise of one of them, if that is considered sufficient to protect the plaintiff’s rights. But they can also be joined together, so as to bring simultaneously as many actions as considered necessary to protect patent rights most effectively. Plaintiffs are free to take either approach according to their interests and particular circumstances in each case.

12.7.5 Time limits for bringing actions

Civil actions against an infringement of patent rights are barred as from five years after the date it becomes actionable.¹⁰⁸

12.7.6 Costs

Costs generated as a consequence of judicial proceedings are categorized in the Spanish legal system (specifically in Article 241 of the LEC) as follows:

• fees for the defense and for technical representation;

• advertisements or public notices subject to mandatory publication;

• deposits required to lodge appeals;

• experts’ fees;

• copies, certifications, notes, and documents that must be requested by law (except for any the court may request from public registries and records);

• duties that must be paid for procedures required during the proceedings; and

• fees arising from court proceedings (when compulsory).

These costs can add up to significant amounts, which is an economic consequence to be considered when initiating litigation and when deciding who should pay for it.

The costs incurred in patent litigation proceedings are regulated in the LEC. The overall guiding principle in apportioning those costs is that of objective victory (loser pays), which means that the prevailing party in a lawsuit has the right to have the opposing party pay the legal costs incurred in having to resort to judicial proceedings.

In certain situations, however, special rules provide that parties pays their own respective costs and that common costs are shared equally. These rules apply where:

• the court considers that the case has posed serious doubts, either de facto (the facts underlying the case are unclear or equivocal) or de jure (the applicable provisions are open to different interpretations, case law on the matter has not been consolidated or courts have ruled in different ways);

• the plaintiff’s claim is partially dismissed (unless they have litigated recklessly, in the court’s opinion);

• the defendant accepts the claim before responding (unless they have shown bad faith); and

• the proceedings terminate in abandonment consented by the defendant.

Judges may not decide on costs at their own sole discretion. They must apply the legal criteria described. And where they make exceptions, they need to justify them.

In the second instance, under the reforms of Royal Decree No. 6/2023,¹⁰⁹ the principle of objective victory (loser pays) continues to apply for ordinary appeals but a special rule is applied to extraordinary appeals in cassation, costs for which are imposed on neither party.

Court rulings with respect to costs are limited to determining which party must pay them. Once a judgment becomes final, if the parties have not reached an agreement on compliance with it, they may apply for appraisal of costs, for which the Clerk of Court (Letrado de la Administración de Justicia) determines the amount to be paid by the party sentenced to pay costs, based on the amount at issue or other relevant factors. Any disagreement over that amount is resolved through adversarial proceedings before the court, and an enforcement order may then be issued if necessary.