Patent Litigation in Practice Series: Spanish protective letters’ early adolescence: a success story

In this issue of our monthly series we visit Spain and learn about Spanish protective letters, which have become a regular tool for defendants in patent disputes over the past decade. 

Despite the hoopla, there are some challenges ahead

Spanish protective letters (“PL”) have turned 12 years old!

The first PL granted by a Spanish court in a patent case was a decision delivered in January 2013. Shortly after, the lawmaker expressly introduced them in the 2015 Patent Act. Since then they have become an often utilised tool by potential defendants when designing their defensive strategies, when they believe that they might face an ex parte preliminary injunction (“PI”) filed by a particular patentee or its exclusive licensee. Ex parte PIs are exceptional under Spanish law. Nevertheless, patentees usually apply initially for the grant of an ex parte PI against the alleged infringer and, subsequently, an inter partes PI. The finality of PLs is precisely to avoid the risk of an ex parte PI, which could cause enormous damage to the defendants.

Requirements for PIs

To obtain an ex parte PI the applicant/ patentee must comply with strict requirements. 

1. It must show a prima facie strong case on the merits (fumus boni iuris). This involves submitting robust evidence of infringement and, in the context of standard essential patents, evidence of essentiality. 
2. It must demonstrate that it has not tolerated the infringement for a long period of time and that special circumstances exist making  a PI necessary due urgency. 
3. It must provide a bond through a first demand guarantee (to cover damages by the patentee if the PI is lifted). 

Purpose of PLs

The purpose of the PL is to enable  potential defendants that fear  being subject to an ex parte PI to file reasons to the Court for dismissing an ex parte PI request before it is filed. These reasons might be categorised as:

• Substantive grounds such as lack of entitlement, non-infringement, invalidity, or non-essentiality arguments: or
• Procedural grounds, such as lack of international jurisdiction, lis alibi pendens, non-compliance with the extreme urgency requirement, or tolerance of the alleged infringement for an excessive time period, unfair delay, or lack of proportionality, 

The PL applicant will be allowed to submit, along with the PL, the documents and expert reports he deems appropriate in support of his application. Once filed, the Court will decide either to admit or dismiss the PL. If admitted, f the protection conferred by the PL will have retrospective effect from the filing date. The protection will be granted for an extendable period of three months. 

Notification of the PL

A distinctive feature of the system is that the Court will order the notification of the decision granting the PL - and, depending on the Court, also of the PL itself and its exhibits— to the patentee. This is to give the patentee the opportunity to file an inter partes PI application with the same Court. In Spain there is no electronic central register of PLs. Therefore, the Court having granted the protection will notify the rest of the Spanish Courts with jurisdiction in patent matters so they are aware of the existence of the potential conflict, its subject-matter and the parties concerned, should the patentee seeks preliminary injunctive relief in another Spanish Court. Another distinctive feature of PLs in Spain is that they assure the competence for infringement for the Court where the PL has been filed (Supreme Court decision of 24 April 2024). This is useful because not all Spanish courts which are competent in patent matters have the same experience in dealing with infringement and validity claims.

In conclusion

As it is often the case with preteens, PLs require some adjustments to help them in their journey to adulthood. Firstly, with a significant increase on the use of this procedural tool in patent matters, a central register where Spanish Courts may consult the protective letters would significantly increase the efficiency of the system. Secondly, the need to notifiy the patentee seems an unnecessary step, and its absence would not restrict the defendant’s ability to design and implement its own enforcement strategy. 

Let’s hope that there is consensus in the legal community for the lawmaker to introduce these amendments before PLs reach their 20s.