12.7.1. Actions for the prevention of patent infringement
Cessation and prohibition represent the archetypical means of defending patent rights, designed to prevent or stop intrusions into the exclusive domain reserved for patent owners. Specifically, two main types of actions of this nature can be distinguished, which are the following:
- 1. Actions for the cessation of patent infringement call on the court to put a stop to ongoing patent infringement and prohibit future recurrences. The factual premise for the admissibility of such an action is that acts of infringement are currently underway (manufacture, sale, importation, etc.) or about to resume or be repeated. This factual premise is purely objective, based on the actual occurrence of activity within a sphere exclusively reserved for the patent owner, irrespective of such subjective elements as culpability. Defendants need not be aware, for instance, that their conduct constitutes infringement to become passive targets of infringement lawsuits. What matters is stopping any form of infringement activity.
- 2. Actions for the prohibition of acts that would constitute patent infringement are intended to prohibit conduct on the part of the defendant that has been identified as potentially infringing, even when such infringement, though imminent, has not yet occurred. The premise for admitting this form of action is an existing risk of something about to occur, something objectively predictable: the initiation of infringement activity.
Spanish law admits the possibility to anticipate cessation and prohibition orders, albeit of provisional duration, in response to an application for provisional measure. In any case, whether or not this possibility of this interim protection has been pursued, these are requests that the plaintiff may submit to the court for it to rule on in its final decision on the patent litigation.
Spanish patent law, in article 72(2), consistent with the EU Enforcement Directive, permits applications for cessation and removal filed against a patent infringer to be extended to intermediaries whose services are being used by a third party to infringe another’s industrial property rights (even if the acts of such intermediaries do not in themselves constitute infringement). The Court of Justice of the European Union (Judgment of July 12, 2011, C-324/90, among others) has stressed that the measures to be imposed on intermediaries must be effective and dissuasive against future infringement, but also fair, proportionate and not excessively costly. Nor must they entail a general monitoring obligation in respect of third parties. In this regard the special regulations contained in LP-2015 must be coupled with legislation on services and electronic commerce in an information society (in Spain, Law No. 34/2002, of July 11, 2002, on information society services and electronic commerce).
Once the final judgment ordering cessation of the patent infringement activity has been issued, the law provides for a guarantee mechanism to motivate defendants to comply with the order or suffer economic consequences if they do not.
The court imposes a coercive indemnity in favor of the plaintiff, commensurate with the circumstances, consisting of an amount to be paid for each day that the infringement does not effectively cease. Neither the ultimate amount of this indemnity, which will be added to the general compensation that the plaintiff is entitled to receive, nor the date from which the obligation to compensate is reckoned, are determined until enforcement of the judgment commences. Thus, voluntary compliance with the judicial decision enables the defendant to avoid a costly penalty.