Procedural Developments in the New Patent Law: Judicious Imitation

After a more than generous vacatio legis period of almost two years, on April 1, Law 24/2015 of 24 July on Patents (hereafter NLP) came into force. Given the many developments introduced by this law (especially in terms of granting procedure), in this article we will focus on those which entail innovations in procedural practice.

To start, the subject-matter jurisdiction for hearing disputes which may emerge from the shadows of the new law is assigned to a specialized body. In the cities which are seats of the High Court of Justice, the General Council of the Judiciary (CGPJ in Spanish) may appoint one or more commercial courts to hear industrial property lawsuits (art. 118.2 NLP). At the moment, the Permanent Commission of the CGPJ, in an agreement published last December 30 in the BOE (Official State Gazette), has assigned the hearing of these matters exclusively to Commercial Courts 1, 4 and 5 of Barcelona; 7, 8, 9 and 10 of Madrid; and 2 of Valencia.

The territorial jurisdiction tries to bring knowledge of such matters to the aforementioned specialized bodies. Provided that there are commercial courts specializing in patent matters in the relevant autonomous community, a commercial court judge corresponding either to the defendant’s place of residence or that of the representative authorized in Spain to act in the patent holder’s name will be competent. In the event that this requirement is not met, any commercial court judge competent to hear patent matters would be competent, at the plaintiff’s discretion (art. 118.3 NLP).

In the case of lawsuits involving patent infringement, the following shall also be competent, at the plaintiff’s discretion: (i) the specialist court of the autonomous community where the infringement took place or its effects would have occurred; or failing that, (ii) any commercial court judge with knowledge of patent matters (art. 118.4 NLP).

The legal standing to file such lawsuits regarding the infringement of industrial property rights is granted to: (i) the registered rights holders, (ii) those who prove they have duly requested such registration (provided it is granted), and (iii) the holder of an exclusive license, unless otherwise agreed (art. 117 NLP).

The new law acknowledges the inherent complexity of these proceedings, extending the deadlines for responding to the lawsuit and counterclaim to two months. As a counterpoint to the generosity of this deadline, the ability to submit expert opinions following response to the lawsuit or counterclaim in those cases in which their non-submission is duly justified with governing documents, provided by art. 337 of the Civil Procedure Law (LEC in Spanish), is restricted (art. 119 NLP).

But perhaps one of the most original developments in the new law is related to precautionary measures. As is known, the LEC allows for precautionary measures to be requested and obtained ex parte when the petitioner so requests and proves that urgent reasons exist or that the prior hearing could compromise the successful implementation of the precautionary measure (art. 773 LEC).

In other European Union member states, individuals who reasonably suspect that the registered holder will request such measures tend to submit documents supporting their defense to the court in advance. In Germany, these documents are known as Schutzschrift, while they are known as protective letters in the field of common law.

The new law on patents opens the door to such documents (which the law refers to in Spanish as escritos preventivos) being submitted to the court that will hear the precautionary measures proceeding. As a consequence, the court will agree to the formation of a precautionary measures proceeding, which will notify the patent holder. If interested, they may then request the adoption of the measure. If they decide to request it from another court, they must inform it of the existence of the escrito preventivo.

To illustrate the immediate popularity of this new procedural tool, we can point to the fact that Barcelona’s commercial courts received eight escritos preventivos related to patents during the Mobile World Congress.

The actions available to patent holders (art. 71 NLP) have also undergone some changes, adapting them to jurisprudence and court practice.  In some cases, the new law has been limited to expressly include widely used procedural channels. Thus, it finally refers explicitly to prohibition actions. In other cases, it adopts established jurisprudential criteria, such as allowing compensation claims for loss of prestige no matter the cause, and not only in those cases permitted by the old law  (“defective production” or “inadequate presentation” of the patent in the market); and restricting the seizure of objects produced in violation of the patent to the means “exclusively intended for such production or the realization of the patented procedure”, and not just “primarily”, as the old patent law stated.

The legislator has also been aware that sometimes a declaratory judgment isn’t sufficient for the infringer to cease their acts of infringement, therefore it provides for coercive compensation (art. 74 NLP).

Finally, in regards to compensation for damages, the new law reflects the Spanish courts’ criteria establishing that the profit lost by the holder and the profit obtained by the infringer cannot be added together (art. 74.2 a) NLP). Following art. 11.1 b) of Directive 2004/48/EC on the enforcement of intellectual property rights, instead of using the price of a hypothetical license for calculating compensable damages, the new law establishes a lump sum which at least includes the amount the infringer would have had to pay the patent holder for the granting of a license that would have allowed them to carry out the exploitation legally, as an alternative criterion to the negative economic consequences of the infringement (art. 74.2 b) NLP).

In terms of court practice, these are, after a first (and necessarily hurried) reading, some of the most notable aspects the new patent law incorporates. New tools, but with proven efficiency. New criteria, but contrasted with doctrine. The legislator seems to have heeded this saying attributed to Voltaire: “Originality is nothing but judicious imitation.”
Luis Ramírez
Partner at ICN LEGAL

931 060 620