06 May 2021

In light of the growth of patent litigation and the need for judges with technical expertise, Spain assigned exclusive jurisdiction over patent cases to certain commercial courts ("specialized courts").

However, despite criticism of such conduct from the courts, litigants continue to try to circumvent these specialized courts where it is to their advantage. In some cases, a potential defendant to patent infringement may be well advised to initiate proceedings (e.g. for invalidity or non-infringement) in order to ensure that the dispute is heard before a specialized court without the need to transfer the action.

The Patent Act 24/2015 ("PA") explained that one of its objectives was "to combine the closeness and decentralization of Justice with a better specialization in patent matters ". For this reason and as agreed by the General Council of the Judiciary ("GCJ"), exclusive jurisdiction over patent matters was assigned to the Commercial Courts of the cities hosting the High Courts of Justice. Shortly after the entry into force of the PA these specialized courts were located only in Madrid, Barcelona and Valencia, but since 1 January 2019, specialised patent jurisdiction has been extended to the Commercial Courts of Granada, Las Palmas de Gran Canaria, La Coruña and Bilbao, a total of 22 specialized courts (distributed across seven cities).

Despite the legislator's clear intention that patent matters be handled by specialist courts, some litigants still in 2021 attempt to circumvent the exclusive jurisdiction of the specialized courts. For example, a claimant may bring a patent infringement action disguised as an unfair competition action in courts which do not have jurisdiction over patents. Although this approach has been deprecated by the courts, it is possible to begin a claim in this way using a specific type of unfair competition provided for in the Unfair Competition Act: unfair competition by infringement of rules.

The strategy of deploying an unfair competition claim restricts the defendant from properly defending itself. Firstly, because in unfair competition action the time limit for responding to the claim is only 20 days compared to two months in the case of a patent infringement claim. Patent infringement cases require greater technical analysis, as well as the preparation of an expert opinion, for which a period of twenty days is extremely short. It is for this reason that the PA extended the period for responding to two months.

Secondly, this strategy deprives the defendant of the opportunity to file a counterclaim seeking the nullity of the counterpart patent under art. 120 PA. Therefore, if a patent infringement action is brought before a court without jurisdiction to hear such matters for the same reason the court is unable to hear the counterclaim for patent nullity.

Therefore, the defendant is rendered almost defenceless and is obliged to resort to the relevant procedural remedies to defend itself against the action, or to file preventive pleadings when a lawsuit of this nature is expected.