An International Guide to
Patent Case Management for Judges

12.6.1 Key features in patent proceedings

Judicial proceedings relating to patents are handled in Spain within the civil jurisdictional division, and more specifically by specialized commercial courts.

The basic rules governing such proceedings are contained in LP-2015, which dedicates Title XII to “Jurisdiction and Procedural Regulations”.⁶⁷ Also applicable, for matters not covered in LP-2015, are procedural rules contained in the LEC.

One of the more noteworthy characteristics of patent-related litigation in Spain is that the cases are adjudicated by specialized civil courts.

Beyond patent infringement, invalidation and declaration of non-infringement actions,⁶⁸ specialized commercial courts have recently been assigned jurisdiction for appeals against SPTO decisions that mark the exhaustion of available administrative remedies for industrial property disputes. Among others, such decisions include patent refusals, oppositions, limitations and the validation of European patents. Jurisdiction for reviewing such SPTO decisions was reassigned from the country’s administrative courts⁶⁹ to civil courts by Organic Law No. 7/2022. The type of judicial proceedings and the court competent to conduct them varies according to the matter in dispute, whether it be patent infringement, invalidation, declaration of non-infringement actions or appeals against SPTO decisions.

As discussed in greater detail below, patent invalidation, patent infringement and declaration of non-infringement actions are adjudicated in the first instance by ordinary commercial courts,⁷⁰ as regulated by the LEC, with significant particularities introduced by Title XII of LP-2015.

Unlike the approach taken by other legal systems, patent infringement and invalidation cases can be handled in Spain as parts of the same proceeding by a single commercial court, which is a common approach in forensic practice.

Patent cases typically start with a patent owner filing an infringement complaint and the defendant denying the infringement and filing a counterclaim for invalidation of the patent allegedly infringed, or invalidation of one or more of the patent’s claims. The judge then analyzes the validity of the patent, and if the invalidation counterclaim is denied, turns to the alleged infringement.

It is also common for the party seeking invalidation and/or a declaration of non-infringement, to initiate the proceedings, with the defendant then filing a counterclaim for patent infringement (seeking a declaratory judgment, injunction, removal and damages).

The process works differently for the judicial review of SPTO patent decisions marking the exhaustion of administrative remedies, as mentioned earlier. In those cases, SPTO decisions are appealed directly and in a single instance to the commercial sections of specific Provincial Courts.

The process for substantiating these appeal proceedings does not go through juicio ordinario, but juicio oral (characterized by greater simplicity of proceedings), subject to the special procedures introduced in Article 447bis of the LEC (see Section 12.6.9.2).