12.9 Enforcement of judgments
In Spain, failing voluntary compliance, the courts are responsible for the enforcement of judgments. The lower court, having heard the case in the first instance, is the one competent for enforcement proceedings.
Enforcement proceedings are initiated at the request of the interested party. They cannot in any case commence for 20 days after the judgment becomes final. The possibility of seeking enforcement lapses five years after the judgment becomes final.
The execution of judgments issued in patent infringement cases is in general governed by the LEC, with certain exceptions established in provisions specifically regulating patents.
In cases where convicted parties breach judgments which include orders to cease or not repeat patent infringement, or to refrain from carrying out acts that may constitute infringement, the court responsible for enforcement, if so requested by the party seeking enforcement, may order the convicted party to:
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put right the harm done;
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compensate the damages caused; and
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refrain from repeating such breach of the judgment, subject to being found in contempt of court.
Such order may be accompanied by a fine for each month that the harm done is not put right. The fine may be imposed without any need for the party seeking enforcement to request it. This provision is intended for purely dissuasive purposes and is payable not to the party seeking enforcement but to the Public Treasury.
LP-2015118 provides for the court to order coercive compensation in favor of the plaintiff in cases where a petition for cessation has been upheld. The aim is to compensate the patent owner for the damage resulting from noncompliance with an order for the cessation of acts infringing their rights. Such compensation is independent of that which may have been ordered in response to an action for damages filed jointly with the action for cessation. The law provides that such compensation must be commensurate with the circumstances. It is ordered in the form of an amount payable per day until such time as the infringement actually ceases. The amount and the date from which payments are reckoned are determined by the court competent for enforcement of the judgment.
If the court rules in favor of an action for damages, the amounts due are quantified and settled during the judgment enforcement phase.119 Provisions require, however, that the basis for quantification be decided as part of the judgment. The owner may require the infringer to produce documents for the purpose of quantifying the damages caused by unlawful exploitation of the patent, but the judge must then take into account the legitimate interests of the defendant for the protection of their trade secrets.120
The SPTO must be notified of judgments, once final, that invalidate a patent, and those issued upon appeal that quash an SPTO decision to grant a patent, so that registration of the patent concerned may then be canceled, or amended as the case may be.121
12.9.1 Provisional enforcement
Spanish procedural rules generally permit the provisional enforcement of judgments that are not yet final in order to avoid damages being incurred during the time required for appeal. Exceptions are made for judgments of certain kinds, as well as non-final foreign judgments, unless provided otherwise by an international treaty.
Among the exceptions are judgments declaring the invalidity of a patent. On the other hand, judgments issued in patent infringement cases may be enforced provisionally.
12.9.2 Enforcement of foreign judgments
The recognition and enforcement of judgments issued by civil and commercial courts in EU member states and by the Unified Patent Court are subject to Regulation No. 1215/2012 of the European Parliament and of the Council of December 12, 2012, on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.122 Those judgments are enforceable in Spain without the need for a declaration of enforceability. The enforcement procedure for such judgments, subject to certain exceptions under Regulation No. 1215/2012, is the same as for judgments issued by Spanish courts.
The enforcement of other (final) foreign judgments in Spain is governed by the LEC, subject to contrary provisions of international treaties in force in Spain or of Spanish law on international legal cooperation in civil matters.123