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Main procedural changes introduced by the Spanish Patents Act Draft

, Grau & Angulo, Spain Laura Morales, Grau & Angulo, Spain

The Spanish Patents Act (SPA) Draft was published on November 28 2014. It aims to modernize the Spanish patent system and to adapt it to the European and international legal frameworks given that the current Patents Act dates back to 1986. The aim is for the SPA Draft to come into force on December 1 2016.

There are some interesting changes introduced by the SPA Draft, for instance, the removal of the unexamined patents, the scope of the state of the art for assessing the validity of utility models or the possibility of protecting chemical inventions such as utility models, the regulation of the Supplementary Protection Certificates, the new regulation of the so-called Bolar clause, or the simplification of the regulation of both labour inventions and compulsory licenses. However, in this article we will try to summarize the main procedural changes that the SPA Draft will introduce in the Spanish legal system, if it is approved by the Spanish Parliament.

Entitlement to bring proceedings

According to Art. 117 of the SPA Draft, the proprietor of the patent and the exclusive licensee would be entitled to bring an action although their title is still not registered, provided that the application for registration of the transfer or license has already been filed, on condition that the application is finally admitted.

This is a change in comparison with the current SPA which establishes in its Art 124 that only the registered proprietor and the exclusive licensee registered at the Spanish Patents and Trademark Office (SPTO) (and the non-exclusive licensee under specific circumstances) are entitled to bring proceedings.

Term to file the defence pleadings and expert reports

Although the Spanish Civil Procedure Act (SCPrA) states a 20 day term to file defence pleadings (or to reply to the counterclaim), Art. 119.1 of the SPA Draft establishes a 2 month term to prepare the defence of both against a lawsuit or a counterclaim.

Regarding the possibility of submitting expert statements after filing the defence pleadings, although the SCPrA states that possibility in some cases, Art. 119.2 of the SPA Draft states that, in principle, this would not be allowed unless the defendant "duly justifies" the impossibility of filing them together with the defence pleadings.

Limitation of a patent within an ongoing litigation

Although Art. 138.3 EPC enables the patentee to amend a patent within an ongoing litigation, the procedural aspects of such an amendment of the claims lack any specific regulation in Spain.

The absence of any rules brought about some problems in the cases where the patentee tried to limit the patent in the course of a litigation, for instance, how and when can the party arguing the invalidity react to the limitation? Are auxiliary requests admissible?

Art. 120 of the SPA Draft provides a few procedural rules with the aim of safeguarding the rights of all parties and clarifies some of the aforementioned questions:

  • The patentee can defend the validity of the patent as granted and, subsidiarily, in an amended version. Therefore, auxiliary requests are allowed (there is no maximum number).
  • Patentees can only amend the patent (main or subsidiary requests) in their defence pleadings.
  • If the patentee alleged the infringement of the patent as granted, at the same time as he proposed the limitation of the patent he would have to prove that the patent as amended is also infringed.

Partial nullity of a claim

So far a claim cannot be declared partially invalid. Art. 102.2 of the SPA Draft states that "If the grounds for revocation affect the patent only in part, the patent shall be limited by a corresponding amendment of the claims and revoked in part."

Protective letters

Protective letters are not regulated in the Spanish legal system. However, Art. 132 of the SPA Draft allows them and establishes some rules on how to use them.


Art. 74.2 of the SPA Draft clarifies that the patentee can choose between its loss of profits "or alternatively" the profits earned by the defendant. Due to the confused wording of the Art. 66.2 of the current SPA, in some patent cases patentees try to accumulate both. With the new wording, the legislator clarifies what Courts have stated before, that it is impossible to accumulate both criteria.

Furthermore, Art 74 also (i) states that in the case that the patentee chooses the option of the hypothetical royalty, the damages to be paid would be, at least the amount of that hypothetical royalty; and (ii) introduces coercive penalties to ensure the cessation of the infringing activity.

Preliminary injunctions

The main change is that the SPA Draft removes the obligation established in Art. 133 of the current SPA imposed on the patentee to prove the exploitation of the patent in order to be able to file a PI motion.

SPTO Expert Statement

Art. 120.7 of the SPA Draft states that in cases in which the validity of a patent is challenged, the Judge or the parties can request the SPTO to issue an opinion on those aspects where the expert reports submitted by the parties are contradictory. The author of that opinion may be called to be cross-examined in trial.

A similar provision was stated in the SPA although it was abolished in 2006.

Infringement by equivalence

Art. 68 of the SPA Draft explicitly refers to the doctrine of equivalents. In practice, this should not have any impact on Spanish litigation due to the fact that the Spanish Courts applied the infringement by equivalence doctrine a long time ago.

These are some of the most relevant procedural amendments the New Patents Act will introduce in the Spanish Patent legal system if the SPA Draft is finally approved as it is. As stated at the beginning of this article, one of the aims of the SPA Draft is to come into force on 1st December 2016.

Bearing in mind the state of the prosecution of the SPA Draft, major changes are unlikely to be introduced in the draft.