Spain
Answer ... The patent holder and any licensees whose licence has been duly registered in the Patent Register of the Spanish Patent and Trademark Office have standing to file suit for patent infringement.
Article 117 of the Patent Act establishes that, unless otherwise agreed, the holder of an exclusive licence may exercise in its own name all actions that are recognised to the patent holder against third parties which infringe its rights. However, the holder of a non-exclusive licence may not exercise these rights; it must rather obtain the authorisation of the patent holder in order to take legal action against possible infringers.
Article 79 of the Patent Act provides that rights to patent applications or patents that are not duly registered in the Patent Register may not be invoked against third parties.
Spain
Answer ... Whenever acts of patent infringement are carried out in Spain, the person committing them may be sued for patent infringement regardless of whether it is a foreign entity with its residence or place of business outside Spain.
Spain
Answer ... Yes, a single infringement action can be brought against multiple defendants.
The Civil Procedure Act allows a single infringement action to be brought against several parties simultaneously, provided that there is a nexus between the actions by reason of title or cause of action. It is understood that the title or cause of action is identical or connected when the actions are based on the same facts.
We can refer to three possible scenarios as examples:
- actions based on the same patent against several defendants on the grounds that their products infringe the patent on the same facts. In these cases, even though the products sued may be different, joinder of actions is accepted;
- actions based on the same patent against several defendants on the grounds that their products infringe the patent but on different facts. In these cases, joinder of actions is usually accepted, but there are no unanimous criteria among the Spanish courts; and
- actions based on several patents against different defendants, with different facts for each defendant and with each patent affecting a different defendant. In this case, the accumulation of actions should not be admitted.
Spain
Answer ... Yes, according to Article 121 of the Patent Act, a third party can seek a declaration of non-infringement or invalidity in Spain.
Any interested party may bring an action against the patent holder for a declaration by the competent court that a particular act does not constitute an infringement of its patent. The action can be filed during the lifetime of the patent and for five years after the expiry date.
The interested party must, prior to filing the action, request the patent holder to make a statement on the enforceability of the patent against:
- the industrial exploitation that the applicant is carrying out on the Spanish territory; or
- the serious and effective preparations that it is making for that purpose.
If one month elapses from the date of the request without the patent holder making a decision, or if the applicant is not satisfied with the reply, it may bring a non-infringement action.
This action cannot be brought by a person that has been sued for infringement of the patent in question.
The application must be notified to all persons holding rights in the patent duly entered in the Patent Register, so that they may appear and take part in the proceedings. However, contractual licensees may not appear in the proceedings if their licensing contract so provides.
The action referred to in Article 121 of the Patent Act may be brought together with an action for a declaration of invalidity of the patent.