Comments on the Objective and Territorial Competence of Spanish Courts to Hear about Actions for Annulment of Patents
In this post we want to highlight some problems affecting the regulation of the objective and territorial competence of Spanish courts with regards to patent invalidity actions which, unfortunately, do not seem to have been overcome by the new Patent Act (to enter into force in April 2017).
Let´s imagine a case in which a company domiciled in Barcelona wants to challenge the validity of a patent owned by a company domiciled in Seville. Before which court should they bring their actions? Under art. 125.2 of the existing Patent Act 11/1986 (in Spanish):
“The competence corresponds to the First Instance Judge of the city in which the Superior Court of the Autonomous Community of the defendant´s domicile is based […]”.
This provision leads to an initial doubt about the objective competence: since the inclusion of Art. 86.ter.2 of the Organic Law of the Judiciary (LOPJ, by its Spanish acronym), it must be understood that the objective competence no longer corresponds to the First Instance Courts but to the Commercial Courts. This was so stated for the first time by the Provincial Court of Careces (Court order No. 4/2010, 26 October). However, this case law gives rise to a doubt regarding the territorial competence because it refers to the Commercial Courts in general, and it considers that it is not justified that such court must be the one of the “city in which the Superior Court of the Autonomous Community is based”. We must recall that the aim of assigning objective competence exclusively to these courts seeks to guarantee of judicial specialization in the field of Intellectual Property. The interpretation suggested by the Provincial Court of Caceres is an obstacle to achieve this goal because these actions would be dispersed in a multiplicity of courts.
Let´s imagine now, that the patent holder is not domiciled in Seville but in Germany. In this case, as we are dealing with an international litigation it is necessary to determine the international jurisdiction of our courts. This matter is quite clear by virtue of Article 22.4 Regulation 1215/2015 (Brussels I) that establishes the exclusive jurisdiction of the courts of the Member State in which the patent has been registered, this is Spain. There is no problem either with assuring that the objective competence corresponds to the Commercial Courts. However, among all the commercial courts in Spain, to which one does the territorial jurisdiction correspond? Article 125.2 is not applicable because we are dealing with a patent holder domiciled abroad. Which criterion shall be applicable to remedy this legal gap?
A first possibility is to look at the general rules governing territorial competence (art. 50 and 51 of the Civil Procedure Act, in Spanish). Nonetheless, article 52.1 expressly points out the following:
“The competence established in previous articles shall not be applicable and the competence will be determined in accordance with what is provided for in this article in the following cases: 13.º In relation to patents and trademarks the court designated by the special legislation on such matter shall be competent”.
Shall this refusal to apply the general rules be interpreted stricto sensu? In our opinion, not! Inasmuch as the special rules on territorial competence do not give an answer in a concrete case, we must turn to the general rule. Thus, art. 50 states that in the case of physical persons “they can be sued in the place where they are placed within the national territory or at their last place of residence and, if this cannot be determined either, at the place of domicile of the plaintiff”. In the case of professionals or entrepreneurs, “in the litigations arisen due to their business or professional activity, they can also be sued in the place where their activities are developed, and if they have their business premises in different places, in any of them upon decision of the applicant”. In the case of legal entities not having registered offices in Spain, “in the place where the legal situation or relationship to which the litigation refers has arisen or shall be effective, provided that in such place there is an establishment open to the public or an authorized representative entitled to act on behalf of the company” (art. 51). At an initial point, these rules seem to overcome the legal gap, but it is easy to imagine problematic situations such as for example, those cases in which a company has registered a patent in Spain but is not making use of it. In our opinion, in these cases, the forum actoris set forth in Art. 50.2 should be applied by analogy.
The regulation on objective and territorial competence provided for in the new Patent Act (in Spanish) fills the gap of the current Art. 125 of the Patent Act but is not free of criticism.
New Art. 118 declares:
“2. The objective competence corresponds to the Commercial Court judge of the city of the seat of the Superior Court of Justice of those Autonomous Community to which the General Council for the Judiciary has agreed to grant exclusive competence relating to patent matters.
3. In particular, the territorial competence corresponds to the specialized Judge of the Commercial Court referred above of the defendant´s domicile, or, where that is not possible, of the place of residence of the authorized representative in Spain to act on behalf of the holder, if the Autonomous Community of his place of residence counts on the Commercial Courts specialized in patent matters referred to in point 2 above.
If this is not applicable, upon decision of the applicant, it shall be competent any Commercial Court judge to whom it may correspond the exclusive competence relating to patent matters, in compliance with point 2”.
In relation with the objective competence, the regulation is plausible inasmuch as favors the long-awaited specialization in the field by means of granting jurisdiction to specialized commercial courts. The problem is that the only specialized courts so far are based in Barcelona (Agreement of the Plenary Session of the Judiciary on 23 November 2011). As regards to Madrid, there is a proposal on which the General Council for the Judiciary has not passed a decision yet. In other Autonomous Communities no similar initiative seems to have been put in place at the moment.
This last fact affects the territorial competence. In principle, in accordance with art. 118, the jurisdiction on invalidity actions shall correspond: a) to the specialized mercantile court of the defendant´s domicile; b) failing this, of the place of residence of the authorized representative in Spain; c) where that is not possible, any specialized mercantile court upon decision of the applicant. The regulation seems to be appropriate as far as it fills the gap of the current Art. 125. Nonetheless, stress should be laid on a curious fact: unless further specialized courts are created before April of 2017, the territorial competence will correspond in every case- concerning both invalidity and infringement actions- to the Courts of Barcelona. The fact of the specialization is good but not to the point that such specialized court is overwhelmed by cases.
Related Posts:
- Selection of Specialized Courts in Industrial Property Rights for Certain Autonomous Communities in Spain
- The hazards of choice of forum clauses in favor of foreign courts
- The Spanish Supreme Court rules on “forum shopping”: Judgment no. 1/2017, of 10 January 2017.
- Jurisdiction for declarations of non-infringement