Since the reform of patent law in Spain under the Act
of 1986, lawsuits in this field have always been different, given the
host of specialties they entail, and it is no exaggeration to say that when the
new Law 24/2015 enters into force they could come to be considered a veritable rara
avis within our judicial system. The singularities which that new Act
ushers in are so many and so far-reaching that any resemblance to other legal
actions will from then on be attributable solely to coincidence.
On the one hand, a curious aspect of the changes we
may expect to witness is that from 1 April 2017 lawsuits in the field of
intellectual property, with the exception of those based on Community
trademarks or designs, may tend to migrate towards Barcelona. Under the new
Act, jurisdiction lies with the mercantile courts of the cities which are seats
of the High Court of Justice, but only within those autonomous communities
where the National Judicial Council has designated specific mercantile courts
to specialize in patent matters. Although the Madrid mercantile courts have
realized the implications of this and are consequently on the way to obtaining
that designation, only Barcelona has courts that so far qualify. It is not
unlikely that the decision to introduce this requirement was to some extent
influenced by the positive image associated with the hyper-specialization trend
in Catalonia. Be that as it may, the change is significant.
Second, intellectual property lawsuits are going to
spark off no little envy within the legal profession due to a factor which
might appear incidental but in practice has considerable importance: the time
limit for responding to the complaint in any civil action regulated by Law
24/2015 will be two months, whereas in any other field it is only twenty days.
This significant, and admittedly rather preferential, extension of the standard
term may be justified in view of the technical issues underlying disputes in
this area and the need to resolve strategic questions bearing on the challenge
to the property right.
Then there is a third factor which sets patent law
proceedings apart from any others: the creation of nothing less than an
instrument for relief against interlocutory relief. Under the new Act it will
be possible for those who envisage that the court may be asked to grant interim
relief against them, without their first being heard, to put forward, through a
“preventive submission”, arguments against the adoption thereof. It is not yet
known whether this arrangement, so foreign to traditional procedure in Spain,
will have the effect of a brake or of a piston, as in the way it is designed it
could generate conflicts where they did not previously exist or instead put out
the fire before the flame has time to take hold. Once again, we are faced with
innovative provisions which have no equivalent in any other area of law.
This special configuration of the patent lawsuit takes
on yet more importance when we consider that the procedural provisions of Law
24/2015 also apply to trademarks and designs. In this regard one may ask up to
what point some actions in the area of trademark law, such as revocation for
non-use, really deserve to be included in so exceptional a system.
As we shall be seeing in future chapters, the changes
we have outlined above are not the only ones which allow lawsuits in this field
to be termed a rara avis.
I. A new Patent Act … In two years'time? (Antonio Castán)
III. The importance of professional advice (Francisco J. Sáez)
IV. Lawsuits under the new Patent Act (Antonio Castán)
V. Utility models under the new Patent Act (Pedro Saturio)
IV. Lawsuits under the new Patent Act (Antonio Castán)
V. Utility models under the new Patent Act (Pedro Saturio)
Author: Antonio Castán
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