The limitation of patents in ongoing revocation procedures in Spain

Limiting a patent by amending the claims during proceedings might be of great help to the proprietor when defending its validity in Court. The patent may be modified to elude the claims of the plaintiff, thus avoiding revocation. In the last few years, the Spanish Courts, including the Spanish Supreme Court, have been ruling on how to lawfully allow this limitation under Spanish patent law.

The Convention on the Grant of European Patents of Munich of October 5, 1973 (“EPC”) was amended in 2000, to include paragraph 3, which states that “in proceedings before the competent Court or authority relating to the validity of the European patent, the proprietor of the patent shall have the right to limit the patent by amending the claims. The patent as thus limited shall form the basis for the proceedings”.

With the intention of making domestic laws align with the EPC, the Spanish Patent Law (“PL 2015”) was passed in 2015 and has been in force since April 2017. The law includes an extensive regulation that, in certain situations, allows the proprietor to limit the patent during an ongoing procedure of revocation and to request that the limited patent be the object of the revocation dispute. Both actions require authorization or acceptance granted by the Court deciding on the revocation.

Scenarios for patent limitation in ongoing revocation procedures under PL 2015

The situations in which a patent may be limited during an ongoing procedure and the limited patent form the basis of the dispute are restricted under the PL 2015. In all situations provided for, authorization or acceptance granted by the Court deciding on the revocation is mandatory, and failure to obtain the authorization or acceptance may result in the annulment of the limitation.

Scenario 1:

The proprietor of the patent is directly sued for the invalidity of the patent: the request for limitation can either be submitted by the proprietor to the Spanish Patent and Trademark Office (“SPTO”) with the authorization of the Court, or directly to the Court in the manner set out in Scenario 2.

Section 105 of the PL 2015 refers to the general possibility available to the proprietor of a patent to file a limitation request at any point in time during its validity. Paragraph 4 of this section specifically provides for the case where the request for limitation is filed whilst a Court procedure on the validity of the patent is still pending, and states that “the request for limitation, addressed to the SPTO, must be authorized by the Judge or Court hearing the procedure”.

In this scenario, the proprietor of the patent and plaintiff in the infringement procedure may also promote, design, and draft the request for limitation. It is also the proprietor and defendant who must seek the Court’s authorization within the revocation procedure, and once granted, file the request for limitation before the SPTO. Before authorization, the Court will grant the plaintiff a two-month period to present their submissions on the limitation request.

Unlike the other scenarios, in this case, the limitation is accepted by the SPTO and not the Court. The SPTO must verify that Court authorization has been granted and is annexed to the request for limitation and will not register the request otherwise. However, despite the obligation of the SPTO to verify the grant of authorization, if no notification of the initiation of the revocation procedure has been presented to the SPTO, it is probable that the SPTO will not have knowledge of the procedure and will accept the limitation with no authorization annexed, as this requirement is only necessary when “a Court procedure on the validity of the patent is pending”.

Notwithstanding this procedural lacuna, the Spanish Supreme Court has ruled that the authorization is mandatory, that it must be sought by the proprietor and not the SPTO, and that it must be granted before filing the request. Failure to obtain Court authorization renders the eventual decision of the SPTO to accept the limitation request null and void, and the Court may declare so in the ruling of the revocation procedure.

In conclusion, under certain requirements, this regulated scenario allows the proprietor and defendant in a revocation procedure to take the initiative and use the limitation of the patent as a tool within the procedure to avoid a revocation ruling of the Court.

Scenario 2:

The proprietor of the patent is the plaintiff in a procedure for infringement and the defendant alleges the invalidity of the patent, either in the form of an exception or a counterclaim, leading to a patent revocation procedure: the request for limitation must be submitted by the proprietor to the Court.

Section 120 of the PL 2015 refers to the possibility that the defendant in a patent infringement procedure may allege the invalidity of the patent as a means of defense, thus initiating the Court procedure for patent revocation.

In this scenario, the proprietor of the patent and plaintiff in the infringement procedure may also promote, design, and draft the request for limitation. However, in contrast with scenario 1, the proprietor must additionally explain the ways in which the limitation will affect and modify the infringement Claim. The proprietor will then present the request to the Court, and in contrast to scenario 1, it will be the Court that will review and accept the limitation. Before the acceptance, the Court will grant the plaintiff a two-month period to present their submissions on the limitation request. Once accepted, the limited patent is forwarded to the SPTO for registration.

Consequently, by complying with the procedural requirements, this regulated scenario provides the proprietor with the additional means of defense against the exceptions of invalidity and counterclaims of revocation in patent infringement procedures.

Scenario 3:

During an ongoing procedure for revocation, the patent is limited outside of the procedure due to unforeseen circumstances other than the proprietor filing a limitation request: the limitation must be presented by the proprietor to the Court.

Section 120.4 of the PL 2015 regulates this exceptional scenario in which the proprietor may request a limitation that already exists and that is external to the procedure. The proprietor must present and the Court may accept the limitation following the same steps provided for in scenario 2. These unforeseen circumstances may include a request for limitation acceptance by another Court in a different procedure.

Conclusion

The PL 2015 provides a variety of additional means of defense to the proprietor of a patent in ongoing revocation procedures to avoid an unfavorable ruling. This is achieved at the expense of partially waiving the extension of the coverage of the patent. The multiple interests of the proprietor must be weighed against each other to determine whether the best strategy is to fight off the Claim and risk revocation, or to partially reduce the scope of the patent to ensure validity. In any case, the advantage of these numbered scenarios regulated in PL 2015 is that the limitation is requested, accepted, and registered within the revocation procedure thereby saving time, additional unnecessary procedures, and registrations.

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