Introduction

The new Patent Act (24/2015) was published on July 25. It will come into force on April 1 2017, replacing the current Patent Act (11/1986).

As the new act states in its explanatory memorandum, its purpose is to modernise the Spanish patent system and bring it further into line with EU and international legal frameworks.

Substantive examination

The new Patent Act significantly changes the procedure for granting a Spanish national patent. Under the present act, substantive examination is voluntary and most patent applicants tend to avoid it. However, the new act makes substantive examination of the patentability requirements a mandatory requirement by eliminating the alternative procedure.

Patent litigation practice

Regarding patent litigation practice, the most important amendments introduced by the new Patent Act are as follows.

Limitation of patent during litigation

The new act introduces rules regarding the limitation of a patent in the course of litigation. At present, although Article 138(3) of the European Patent Convention enables the patentee to limit the patent by amending the claims during invalidity litigation, the procedural aspects of such claim amendment lack specific regulation in Spain.

The absence of procedural rules in this regard has caused conflicts and disputes in cases where patentees were allowed to amend the patent during litigation. It has not been clear, for example:

  • up to what point the patentee can amend the patent,
  • how and when the party arguing invalidity can react to the limitation; or
  • whether auxiliary requests are admissible.

The new act provides procedural rules to solve some of these problems:

  • The patentee will be able to defend the validity of the patent as granted and/or in an amended form.
  • The patentee will be able to amend the main or subsidiary patent claims in the defence pleadings, but not afterwards. If the patentee has alleged the infringement of the patent as granted, then when limiting the patent it must argue why the patent as amended has also been infringed.
  • The party challenging the validity of the patent will have a non-extendable two-month term in which to file a brief challenging the validity of the patent as amended.

Partial invalidity

The new act eliminates the prohibition on declaring partial invalidity of a claim.

Protective briefs

The new act incorporates protective briefs into the Spanish procedural system. Although the present patent legislation makes no reference to protective briefs, some companies have filed them before the Madrid and Barcelona commercial courts in recent years. The Madrid courts have tended to reject them on the grounds that they have no explicit legal basis. However, the Barcelona courts have accepted them, although they have informed the patentee of the filing of the protective brief.

Under the new act, any party that expects to be the subject of an ex parte preliminary injunction may file a protective brief explaining why the preliminary injunction should not be granted. The patentee will be notified of the filing of the protective brief.

Patent courts

Under existing patent law, commercial courts are competent to handle patent cases. However, under the new act only patent courts (commercial courts which have been attributed exclusive jurisdiction regarding patent matters) will be competent. At present, the only patent courts in Spain are Barcelona Commercial Courts 1, 4 and 5. However, certain Madrid commercial courts are expected to be designated as patent courts shortly.

Term to file defence pleadings

Whereas the Civil Procedure Act establishes a term of 20 working days from service to file defence pleadings or respond to a counterclaim, the new Patent Act will expand that term to two months in patent cases.

Damages

Regarding damages, the new act clarifies that the patentee can choose between its own lost profit and the profit made by the defendant. Due to the unclear wording of the equivalent proviso of the present Patent Act, in some cases patentees have (unsuccessfully) tried to accumulate both.

Expert statements

The new Patent Act will make it possible in validity cases to request the Spanish Patent and Trademark Office (SPTO) to issue an opinion on areas in which the parties' expert statements are contradictory. The parties will be able to require the SPTO examiner who prepares the opinion to be called for cross-examination in trial. A similar provision of the present Patent Act was abolished in 2006.

Comment

The changes to be introduced by the new Patent Act on its entry into force in April 2017 go beyond those summarised in this update. Time will tell how the new provisions work and whether the new act succeeds in modernising patent litigation in Spain.

For further information on this topic please contact Miguel Gil at Grau & Angulo by telephone (+34 91 353 36 77) or email (m.gil@gba-ip.com). The Grau & Angulo website can be accessed at www.gba-ip.com.

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