In view of their limited resources and technical knowledge in certain areas, Spanish courts rely heavily on opinions issued by “independent” experts and bodies such as the Spanish Patents and Trademark Office (“PTO”).
In the absence of patent courts, experts play a significant role in patent infringement and revocation proceedings (both exclusively heard by civil courts) in Spain. In fact, typically in proceedings involving pharmaceutical patents, it is not uncommon for the parties to file more than one expert report each to support their positions. If the proceedings involve infringement and validity claims, the judge may end up having to consider eight different and often contradictory reports. Faced with this situation, some judges feel compelled to appoint their own expert in a search for technical knowledge and independence. The so-called “independent” experts are appointed by courts from lists provided by professional associations. Individuals holding corresponding university degrees can be included in those lists. Depending on the technical field and the relevant professional association, additional conditions may be required (for instance, having a specialization degree or accredited professional experience, or overcoming a selection process).
A current example for this situation is a recent order issued by a commercial court in Madrid. The Supreme Court had confirmed the patentee’s right for a compensation consisting of the royalty the defendants would have had to pay for the legal exploitation of the patent, and the case had moved down to the first instance court for the compensation to be fixed.
Both parties conducted their own assessment of damages for which they used accounting experts. In total, they filed eight different expert reports concluding that the royalty due to the plaintiff was between € 40,000-€ 400,000 –according to the defendant’s experts- and € 83 million -according to the plaintiff’s experts. The judge decided to appoint an “independent” expert who concluded that the defendant had to pay the plaintiff € 20 million.
The judge stated in its order that the parties’ reports lacked credibility. He declared that he was “forced” to apply the valuation methods and assessment conducted by the court-appointed expert who “as a result of having been appointed independently and in light of his impartiality, objectivity and grounds of his conclusions deserves a greater credibility”.
Under Spanish law the judge is free to assess the evidence put forward by the parties. This means that expert evidence is not given any specific weight, nor are court-appointed experts necessarily given more credit than parties’ experts. In practice, however, as happened in the Madrid case reported, courts rely substantially on the conclusions reached by court-appointed experts due to their presumed impartiality and objectivity.
In the search for “objectivity”, at the request of Spanish judges, the legislator is planning to introduce a provision in the new Patents Act –currently in the form of a Draft, approved by the Council of Ministers in April 2014- allowing the court in patent revocation proceedings to request the Spanish PTO to produce a report on the issues on which the parties’ expert reports are in contradiction in proceedings where the validity of a patent is at stake. The parties may also request the court to do so.
Whilst someone not involved in the case may provide a fresh look, there is also the risk – when the matter involves complex technical issues as is usually the case in pharmaceutical or technology patent disputes – that he does not possess the degree of knowledge in the relevant field that the parties’ experts, usually chosen amongst highly qualified, well-known and reputed professionals in their sector, would typically have. In any event, the desire for “independence” appears to be here to stay.