An International Guide to
Patent Case Management for Judges

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.