12.8 Other patent-related actions
12.8.1 Actions for declaration of non-infringement (negatory action)
Article 121 of LP-2015 makes explicit provision for a “negatory action” (acción negatoria), “an action against the owner of a patent so that the competent judge may declare that a particular act does not constitute infringement of the patent”.
Before bringing this action, the plaintiff seeking such a declaration must ask the patent owner through notarial channels to make known their views on whether the plaintiff is infringing the owner’s patent through industrial exploitation in Spain. If the patent owner does not reply within one month, or if the plaintiff does not agree with their reply, the plaintiff may then bring the negatory action.110
Such an action may not be brought by a person against whom a patent owner has already brought an action for infringement,111 but may be brought if provoked by a demand from the patent owner directed to a person accused of infringement.
For the negatory action to succeed, the plaintiff must prove that their product or procedure does not infringe the defendant’s patent,112 which places the burden of proving non-infringement on the plaintiff. The plaintiff must then prove that their product or procedure does not reproduce each of the technical features of the patent claims at issue. As in infringement cases, each of those patent claims must be divided into technical elements to confirm whether the product or procedure exploited by the plaintiff simultaneously reproduces each and every one of those elements. If it does not, then the claim is not being infringed.
Lastly, the Law expressly provides for the possibility of joining the negatory action and the patent invalidation action.113
12.8.2 Action claiming ownership
As noted with respect to the causes of invalidity, Article 10(1) of LP-2015 provides that “The right to a patent shall belong to the inventor or to their successors in title and it shall be transferable by any of the means recognized in the Law.” And according to Article 12 of LP-2015, where a patent has been granted to a person not authorized to obtain it, the person authorized may claim transfer of ownership of the patent.114 Thus, the inventor or their assignee could opt to claim transfer of registration, or as explained earlier, seek to annul the registration.
12.8.3 Compensation for damage and prejudice caused by the owner of an invalid patent having acted in bad faith
Article 104(1) of LP-2015 provides that “a declaration of invalidation shall imply that the patent has never been valid” and thus cannot produce the effects provided for in Title VI115 of the Law.
Article 104(3) of LP-2015, to establish the limits of such retroactivity vis-à-vis res judicata decisions, begins with the phrase “without prejudice to compensation for damage and prejudice that may be due when the owner of the patent has acted in bad faith”. That implies that a party injured by an invalidated patent is entitled to compensation for the damage and prejudice caused when the patent owner acted in bad faith. Such bad faith implies that the owner was aware of the cause of their patent’s invalidity116 and has to be assessed based on when the damage was caused.117 This enables a person convicted for infringing a patent later ruled invalid to recover amounts paid as compensation for the supposed infringement, so long as the validity of the patent was not discussed in the initial litigation.
Effects of the patent and of the patent application.
Judgment of the Provincial Court of Barcelona 77/2018 of February 6, 2018, ECLI:ES:APB:2018:949 (SAPB 77/2018): “Our understanding in this context is that the owner's bad faith depends on their knowledge at the time of the patent's invalidity and of their noncompliance with the requirements for patentability.”
SAPB 77/2018: “Bad faith must be assessed based not on when registration was applied for but on when the owner decided to bring and persist in the infringement action, despite knowing that they had not met the novelty requirement.”