Spanish courts spend a lot of their time “transferring” things from A to B. So, when the defendant in a patent case files a validity counterclaim, the court must “transfer” it to the claimant. This transfer is of crucial importance because it sets off the two-month deadline for answering the counterclaim. So, what actually happens? Historically the officers of the court took the copy of the counterclaim which the defendant’s scribes had provided and physically gave it to the claimant’s procurator, that most Spanish of legal professionals. However, this was somewhat cumbersome, so at some point it occurred to somebody that maybe the defendant’s procurator could just give it to the claimant’s procurator. All very practical, but an immediate affront to the principle that it is the court which must drive and control the process. The solution is simple. In due course the court issues a piece of paper making an albeit symbolic “transfer”, thereby kicking off the deadline.

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So far so good. However, things grew complicated when the revised Patent Act, which came into force in 2017, allowed the patent owner to file an application to limit the patent in response to the counterclaim. Although this had always been possible under Article 138.3 EPC, Spanish courts had grappled with the unforeseen procedural consequences. Article 120 of the new Act changed all that by firstly specifying that the limitation application had to be filed with the answer to the counterclaim, and secondly establishing a two-month time limit to respond. As usual the court was required to “transfer” the application to the counterclaimant, whose time limit to respond was however to start upon “receipt” of the application. This led to a flurry of academic articles which argued that the starting point for this new time limit would not be the court “transfer” itself but, long before that, when the electronic exchange had actually taken place between the procurators.

In a recent decision, Barcelona Commercial Court No. 5 has ruled for the first time on this conundrum. The tried and trusted transfer option wins the day: “Any of the other proposed interpretations would mean leaving the kick-off for the computation of the procedural deadline up to one of the parties, who would be driving the process, thereby depriving the first paragraph of the provision of any meaning. Taken to the absurd, if the beginning of computation of the time limit were to be from the moment of receipt of the application – one assumes, between procurators, between the parties themselves – why is a transfer by the court provided for?”. For Article 120.5 “in no way authorizes relegating that both the process and time control be driven by the court“.

Author: Colm Ahern

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