What to Do If Someone Copies Your Invention: Steps to Defend Your Patent or Utility Model in Spain

Estimated reading time: 10 minutes

Introduction

Discovering that a competitor is manufacturing, selling or using a product that reproduces your protected invention can be as frustrating as it is destabilising for any business or independent inventor. The effort invested in technological development, the costs of filing for protection and the excitement placed in an innovative idea can all feel suddenly threatened. However, Spanish law provides patent and utility model holders with concrete tools to act against these infringements.

In this article, we explain in a clear and structured way what steps you should take when you suspect someone is infringing your patent or utility model in Spain — from the initial investigation through to the legal actions available. This is a process that requires strategy, patience and, above all, the guidance of professionals who specialise in industrial property law.

What Is Patent or Utility Model Infringement?

Before getting into the detail, it is worth clarifying the concept. Patent or utility model infringement occurs when a third party, without the authorisation of the rights holder, carries out any of the acts that the law reserves exclusively for the holder. These include, among others:

• Manufacturing the patented product or a product incorporating the subject matter of the utility model.
• Marketing, offering for sale or importing said product.
• Using the process protected by the patent.
• Storing the infringing product for commercial purposes.

The key legislation in Spain is Law 24/2015, of 24 July, on Patents, which governs both invention patents and utility models, establishing the framework of exclusive rights and the enforcement mechanisms available to the holder.

Step 1: Before Acting, Does The Alleged Infringer Have Any Rights That Justify Or Appear To Justify His Or Her Actions??

The first step — and arguably the most important before making any decision — is to conduct state-of-the-art research in the register and on any industrial property rights the alleged infringer may hold. Not every person who appears to have copied your invention is necessarily acting without their own legal coverage.

Why Is This Prior Investigation So Essential?

It may be the case that the competitor you are targeting as an infringer is, in fact, the holder of a patent or utility model that predates your own application. If that is the case, the situation could be reversed: the other party would be the one with the prior right, which would seriously undermine or invalidate your legal position.

For this reason, before issuing any kind of cease-and-desist letter or initiating legal action, you should carry out the following:

1. a) Patent database search

It is essential to consult both public and private databases to determine whether the alleged infringer has any legitimate rights and whether the protection obtained provides a sufficiently solid basis for initiating infringement proceedings. The goal is to determine whether the alleged infringer — or any company within their group — has applied for or been granted any patent or utility model relating to the product or process in question.

1. b) Analyse filing and priority dates

If the search reveals registrations in the competitor’s name, the next critical step is to compare the filing and priority dates of those protections against the dates of your own applications. In patent law, temporal priority is decisive: whoever filed first holds the preferential right, regardless of who invested more or earlier in developing the technology.

• If the competitor’s patent or utility model is earlier than yours: you must carefully review the actual scope of your rights and assess whether infringement truly exists — or whether, on the contrary, it is you who is operating in a space protected by a third party. In this scenario, the most prudent course of action is to maintain a cautious stance and refrain from acting prematurely.
• If their registrations are later than yours: your position is considerably strengthened, and you can proceed to the following stages of the process.
• If they have no registered protection at all: this is equally valuable information that simplifies your enforcement strategy.
• If there has been a breach of contract, an abuse of rights, or other grounds for nullity or that justify a claim for restitution.

This prior analysis is an indispensable investment. Acting without having carried it out can be counterproductive, exposing you to counterclaims or undermining your credibility in any eventual judicial proceedings.

Step 2: Request the State-of-the-Art Report (IET) from the OEPM

If the prior investigation confirms that the alleged infringer has no protection of their own — or that their registrations postdate yours — the next step in the specific case of utility models is to request the State-of-the-Art Report (IET — Informe sobre el Estado de la Técnica) from the OEPM.

What Is the State-of-the-Art Report?

The IET is a technical document prepared by the OEPM that compiles the most relevant prior art documents in relation to the claims of the utility model. In essence, it allows an assessment of the degree of novelty and inventive step of the protection, examining whether any prior art exists that could wholly or partially invalidate the model.

Why Is It Mandatory for Utility Models?

Unlike patents, utility models in Spain are granted without having to conduct a prior search report or a preliminary substantive examination. This means that the OEPM does not verify at the time of grant whether the model genuinely meets all the requirements of novelty and inventive step; it simply checks that the formal requirements are satisfied and grants the right accordingly. As a result, a granted utility model does not, on its own, offer the same legal solidity as a fully examined patent.

For this reason, Spanish Patent Law establishes that, in order to bring an infringement action based on a utility model before the courts, it is mandatory to have previously obtained the State-of-the-Art Report. Without this report, infringement proceedings cannot succeed on procedural grounds.

The Dual Purpose of the IET

The IET serves a dual strategic function in your enforcement process:

1. Validating your protection: If the report does not identify prior art that destroys the novelty or inventive step of your model, you have a solid basis on which to act. If, on the other hand, the report uncovers documents that closely anticipate your invention, this is the moment to assess whether the action is worth pursuing or whether the strategy should be reconsidered.
2. An unavoidable procedural requirement: As noted above, it is a legal precondition for bringing an infringement action. Courts will require it, and not having it in place effectively stops any judicial action based on a utility model.

The time it takes to obtain the IET can range from a few weeks to several months, so it is advisable to request it as early as possible once the infringement has been identified and the prior analysis has returned a favourable result.

Step 3: Send a Formal Cease-and-Desist Letter to the Infringer

With a favourable IET in hand — or, in the case of a patent, directly following verification of the infringement — the next step before initiating any judicial proceedings is, in most cases, to send a formal cease-and-desist letter to the alleged infringer.

What Does the Cease-and-Desist Letter Involve?

The cease-and-desist letter is a formal communication, typically drafted by the industrial property agent or the lawyer, addressed to the alleged infringer, notifying them of the following:

• The existence of your patent or utility model and its registration details.
• The specific acts considered to be infringing.
• The demand that they immediately cease those acts.
• The potential claim for damages arising from the infringement.
• The legal consequences should they fail to comply.

This document carries considerable legal and practical weight. On one hand, it formally establishes from what point in time the infringer had knowledge of your right and the infringement, which is directly relevant to the calculation of damages. On the other hand, in many cases, a well-founded cease-and-desist letter is sufficient to prompt the competitor to stop their infringing activity or to open negotiations, thereby avoiding a costly and protracted court process.

How Should It Be Drafted?

The cease-and-desist letter must be technically precise and legally sound. It is essential that it clearly identifies the infringing acts and maps them against the claims of the industrial property title, setting out why those acts fall within the scope of protection of your patent or model. A vague or poorly reasoned letter can be counterproductive and undermine your credibility.

Step 4: Explore Alternative Dispute Resolution (ADR) Methods

In parallel with, or as an alternative to, the cease-and-desist letter, Spanish legislation — and in particular recent procedural reform — actively promotes the use of Alternative Dispute Resolution (ADR) methods before resorting to the courts. In fact, since the entry into force of Organic Law 1/2025, of 2 January, on measures relating to the efficiency of the Public Justice Service, attempting extrajudicial resolution of a dispute is configured as a procedural prerequisite for certain civil and commercial matters.

Main ADR Options Available in Industrial Property Disputes

Mediation: A neutral mediator facilitates dialogue between the parties to help them reach an agreement. It is a flexible, confidential process that is faster and less expensive than litigation. In the industrial property context, it can be particularly useful when there is a pre-existing commercial relationship between the parties, or when both have an interest in a solution that might include, for example, the grant of a licence.

Conciliation: Similar to mediation, but with a slightly more active role for the third-party facilitator, who may propose specific solutions.

Arbitration: The parties submit the resolution of their dispute to an arbitrator or arbitral tribunal whose decision — the award — is binding on both parties. It has the advantage of being more agile than ordinary civil justice and allows arbitrators who are specialists in industrial property to be appointed, which can result in a more technically informed decision.

Advantages of ADR in Patent Disputes

• Lower cost compared to court proceedings.
• Faster resolution.
• Confidentiality: unlike judicial proceedings, the parties’ positions and any agreement reached are not made public.
• Flexibility to reach creative solutions: licences, coexistence agreements, royalty payments, and so on.
• Preservation of the commercial relationship when the parties wish to continue operating in the same market.

The success of ADR depends largely on both parties’ willingness to negotiate in good faith. If the infringer shows resistance or acts in bad faith, escalating to judicial proceedings will be necessary.

Step 5: Judicial Action for Patent or Utility Model Infringement

If the cease-and-desist letter has yielded no result and ADR has also failed to resolve the dispute, the rights holder may bring an infringement action before the competent courts.

Competent Courts

In Spain, industrial property matters fall under the jurisdiction of the Commercial Courts (Juzgados de lo Mercantil), with appeals heard by the Provincial Courts (Audiencias Provinciales). In certain circumstances, it may also be possible to bring proceedings before the Unified Patent Court (UPC) for European patents validated in Spain or for European patents with unitary effect

Actions Available to the Rights Holder

Spanish Patent Law grants the holder a broad range of enforcement actions:

• Cessation of the infringing acts, urgently through interim measures if necessary.
• Compensation for damages, which may be calculated on the basis of the profits made by the infringer or on the basis of the licence fee the infringer would have had to pay.
• Seizure and destruction of infringing products and the means used to manufacture them.
• Publication of the judgment at the infringer’s expense.
• Transfer of ownership of seized products and means in certain circumstances.

Interim Measures: Acting with Urgency

Where the infringement is causing serious and urgent harm, the rights holder may apply to the court for interim measures even before filing the main claim. The most common in patent matters are:

• Precautionary suspension of the infringing acts.
• Seizure or judicial deposit of the infringing products.
• Security bond required of the alleged infringer as a condition for continuing their activity pending judgment.

Interim measures require the applicant to demonstrate fumus boni iuris (a plausible legal basis — i.e., that your patent appears valid and apparently infringed) and periculum in mora (the risk that the harm will worsen if the final judgment is awaited).

Assessing the Cost of Litigation

The cost of patent litigation in Spain can be significant and varies depending on a number of factors: the technical complexity of the case, the length of the proceedings, the need for specialist expert reports, legal and representation fees, and potential appeal stages.

It is essential to carry out a realistic cost-benefit assessment before initiating judicial proceedings, weighing the estimated costs against the value of what is being protected and the damages already caused or ongoing. In some cases, the cost of litigation may exceed the anticipated benefit, which further underlines the importance of having exhausted extrajudicial routes first.

Process Summary: Step-by-Step Overview

To make the full process easier to follow, here is a clear outline of the key stages:

1. Prior investigation → Search for patents held by the alleged infringer → Compare filing and priority dates
2. If the alleged infringer has no prior protection, or theirs postdates yours: → Request the State-of-the-Art Report (IET) from the OEPM (mandatory for utility models)
3. With a favourable IET: → Issue a formal cease-and-desist letter
4. If the cease-and-desist letter has no effect: → Initiate ADR (mediation, conciliation or arbitration)
5. If ADR fails: → Assess the cost of judicial proceedings → File a claim before the Commercial Courts → Apply for interim measures if appropriate

Why Specialist Advice Is Essential

Each of the steps described above requires very specific technical and legal expertise. An error in the prior investigation can lead to acting against a party who actually holds a prior right. A poorly focused IET request may not reflect the true strength of the protection. A badly drafted cease-and-desist letter can weaken the holder’s position. And a claim without the right strategy can result in an adverse costs order and a reinforced position for the infringer.

For this reason, having the support of an Official Industrial Property Agent with experience in patent and utility model disputes — working alongside lawyers who specialise in industrial property litigation — is not a luxury, but a strategic necessity.

At Abecsa, we have spent decades supporting inventors, SMEs and large corporations in protecting their innovations, from the initial application through to enforcement against infringers. We know the OEPM procedures inside out, the workings of the Spanish and European patent systems, and the practical realities of the commercial courts in industrial property cases.

Conclusion

Defending a patent or utility model against infringement in Spain is a process that demands rigour, strategy and patience. The key is not to react impulsively, but to act in an orderly and informed manner: investigate first, consolidate your own legal position, comply with the procedural requirements (such as the IET for utility models), pursue extrajudicial options, and only go to court if necessary and if the economic assessment justifies it.

Most importantly, do not act alone. If you suspect someone is using your invention without your authorization, contact us and we will analyse your case individually to offer you the most appropriate strategy for your situation.

Do you have questions about whether your patent or utility model rights are being infringed? Get in touch with the Abecsa team for a no-obligation consultation