In Spain, jurisdiction over civil patent disputes in the first instance is exclusively held by the so-called Commercial Courts (Juzgados de lo Mercantil). These Courts, which have been in operation since 1 September 2004, were actually instituted on the occasion of a comprehensive reform undertaken the previous year on the former insolvency law, by assigning to these newly-created Courts exclusive competence on whatever legal issues that could arise in relation to insolvency and bankruptcy matters.

However, in addition to the above, it was decided to also give exclusive competence to Commercial Courts regarding several other fields of law, namely in the area of transport, maritime law, the general terms and conditions of contracting, mortgage registry entries, antitrust law, unfair competition, advertising, copyright and industrial property (and, consequently, patent disputes). Thus, for our purposes, the result was that patent litigation cases in Spain are now heard in the first instance by Courts which actually are only “semi-specialized” in this area of law.

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Over the years, however, the need for Commercial Courts to become more specialized became evident, at the very least in patent matters, given their inherent technical specificities. It was in response to this increasing need that Commercial Courts in Barcelona were the first to reach an agreement, later endorsed by the General Council of the Judiciary, pursuant to which, of the twelve Commercial Courts based in that city, only three of them (nos. 1, 4 and 5) would handle patent disputes. This assignment of specialized competence has been effective within the Barcelona Courts since 1 January 2012.

The Commercial Courts in Madrid are now the ones which have taken the path towards greater specialization in patent matters. In a meeting held on 18 March 2015, the Commercial Judges came to an agreement similar to the one reached in Barcelona three years ago, pursuant to which, of the existing twelve Commercial Courts in Madrid, only four of them would hear disputes related to patents. In this case, patent competence was assigned to Commercial Courts nos. 7, 8, 9 and 10 of Madrid.

This system is still pending effective implementation, and there is no news yet that the agreement for the Madrid Judges has been endorsed by the General Council of the Judiciary. Nevertheless, once it is operational, it will certainly help to improve the experience and knowledge of specialized Judges, resulting in richer case law on the construction of patent law.

This approach towards Court specialization in patent matters has come to stay. In fact, the new Spanish Patents Act passed recently (Act 24/2015, of 24 July, on Patents, published in the Official Gazette of 25 July and entering into force on 1 April 2017) already echoes this trend when, among the jurisdiction rules set forth therein, it expressly assigns competence to hear patent disputes particularly to Commercial Courts within the relevant territory which had taken exclusive jurisdiction on patent matters as agreed by the General Council of the Judiciary, if any (Art. 118).  

Luis Fernández-Novoa, Hoyng Monegier