12.6.9 Proceedings
12.6.9.1 Infringement and invalidity proceedings
The ordinary proceedings to substantiate patent litigation entail the submission of both written and oral evidence.
The first phase in these proceedings, focused on allegations, is dominated by written submissions and starts with the filing of a formal claim.
12.6.9.1.1 Statement of claim
Infringement or invalidation proceedings start with a written claim generally similar to those filed in ordinary trials on other matters.
The statement of claim must provide the plaintiff’s and the defendant’s identifying information and circumstances, domicile, residence or place where they can be located. It must then enumerate and separately present the facts and legal arguments supporting the claim and clearly state what is being asked of the court.
The claim must be accompanied by documentation supporting the claim, including the opinions of experts designated by the plaintiff, as explained in Section 12.6.7.2.
12.6.9.1.2 Statement of defense
The defendant’s response to the plaintiff’s claim also resembles those presented in most other ordinary trials, consisting of a written statement denying or admitting the facts as presented by the plaintiff.
The defendant must also indicate procedural exceptions and other allegations that need to be considered as part the proper adjudication of any case.
Patent litigation sets apart from other proceedings in a longer time limit for responding to the plaintiff’s claim: two months,88 compared to 20 working days for most ordinary proceedings.89
Another particularity, where the validity of a patent is being challenged, as mentioned in Section 12.6.5, is that the plaintiff can amend their claim during the substantiation phase by opting to limit the patent and present a new set of claims. A patent can also be amended out of the proceedings owing to a change in circumstances, and the patent owner may then request that the amended patent serve as the basis for court proceedings.90
Where proceedings have been initiated by an action for invalidity, the amendment of a patent claim to limit the patent must take place during consideration of the defendant’s (the patent owner’s) response to the plaintiff’s claim (that of the party alleging invalidity).
12.6.9.1.3 Counterclaim
Spanish procedural rules permit defendants to respond to a plaintiff’s claim not only by defending themselves but also by making their own claims against the plaintiff.91
Such counterclaims are admissible, however, only if made in connection with the initial claim.
In patent litigation, as explained earlier, that connection is clear when the claim is for infringement, the defendant denies the infringement and then files a counterclaim for invalidation of the patent.92 The connection can also be established when after the initial claim is for invalidity, the defendant denies the invalidity and files a counterclaim for infringement.
The patent owner can also limit the patent by amending its claims when responding to the counterclaim in which the defendant accused of infringement requests the invalidation of the patent that the initial plaintiff considers infringed. See Section 12.6.5 for more details.
Once a response has been made to the initial claim, and to the counterclaim as the case may be, the written phase of proceedings comes to a close and subsequent proceedings are predominantly oral.
12.6.9.1.4 Preparatory hearing
Once the claim or, as the case may be, the counterclaim has been answered, the parties are summoned to appear before the court for a preparatory hearing.
This hearing is aimed essentially at reaching an agreement between the parties to deal with procedural issues, delineate the object of the proceedings and decide on what evidence will be admissible (for an immediate ruling by the judge after hearing proposals from each party).
12.6.9.1.5 Trial
Trial is where the evidence ruled admissible is presented and debated before the court.
As described in Section 12.6.7, the range of admissible forms of evidence is quite broad and may consist of statements by the parties, witness testimony, oral expert reports, dissenting expert opinions, the taking of evidence by the court, and in some cases recorded words, images and sounds.
Following this evidentiary phase, the parties present their conclusions. During this phase the attorneys for each party present oral statements on the facts in dispute and assessments of the evidence and legal arguments presented in support of their respective claims. This concludes the proceedings prior to the court’s judgment.
It is not uncommon for patent litigation to be scheduled over several sessions on successive days.
12.6.9.1.6 Judgment
Following the trial, if there is no agreement to hold final proceedings,93 the court has 20 days to issue its ruling, which must be in writing.
Judgments issued on patent cases generally resemble those issued in other cases, though sometimes entailing difficulties inherent in the subject matter concerned.
The judgment must include an analysis and assessment of the facts based on the evidence presented and cite legal norms and principles in support of the judgment’s dispositive provisions.
The judgment’s dispositive provisions must be numbered and formulated as acceptance or dismissal of the parties’ respective arguments.
12.6.9.2 Proceedings against SPTO decisions
Appeals filed against SPTO decisions are substantiated by means of a verbal proceeding, subject to special provisions contained in Article 447bis of the LEC.
A verbal proceeding consists of a combination of written and oral proceedings.
Very briefly, following an SPTO decision marking the exhaustion of administrative remedies, these verbal proceedings are initiated by a written appeal to the Provincial Court having jurisdiction to hear it. The case file is then obtained from the SPTO, the parties are summoned and the appellant is given a deadline for the formalization of their appeal.
The SPTO and other interested parties are then invited to respond.
Following the written allegations phase, if one of the parties so requests, the parties are summoned to an oral hearing before the court to consider the appellant’s allegations and hear allegations from the other parties.
Following that hearing, or in its absence, the proceedings conclude in preparation for the judgment.
In order for the counterclaim to be adjudicated, it may also need to be filed against a third party, in addition to the initial plaintiff.
The final proceedings are evidentiary in nature and very limited. They can only be granted at a party's request and under very specific circumstances. The judge may exceptionally order such proceedings ex officio.