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