A recent ruling by Section 15 of the Provincial Court of Barcelona, specialising in industrial property, dated 13 May 2025 (ECLI:ES:APB:2025:7775), corrected on 2 June (ECLI:ES:APB:2025:7683AA), resolved a dispute concerning the ownership of a Spanish patent and a utility model in favour of recognising the status of a second person as inventor in the development of the invention and the right of the companies with which that second inventor worked to claim co-ownership of the rights to the inventions.
The dispute involved two companies, Infoporc and OPP, and Mr Sebastián, one of the partners in a company with which they worked to develop a thermal disinfection system for animal transport vehicles.
During the proceedings, the plaintiffs argued that the inventions had been developed within the framework of a joint research and development project initiated in 2013, in which Infoporc had taken the initiative and actively participated through technical and management personnel and a technical collaborator, Mr Ricardo, who was contractually and professionally linked to OPP. However, Mr. Sebastián registered the inventions in 2015 in his own name, omitting Mr. Ricardo’s participation and the technical contributions of the plaintiffs derived from that joint collaboration.
Commercial Court No. 5 of Barcelona upheld the claim in its entirety, declaring the ownership of the patent and utility model in favour of OPP and INFOPORC, as well as recognising Mr Ricardo as co-inventor. The ruling was appealed, but the appeal was dismissed by the Provincial Court in the ruling we are discussing, fully confirming the ruling handed down in the first instance.
The action for recovery of property is an essential legal instrument for protecting the true owner of an invention against improper registrations by a third party. In this case one of the partners of the company with which the inventions were developed. The regulation of this action is set out in Article 12 of the Spanish Patent Act (SPA), which enables for the restoration of ownership when the patent has been applied for by someone who lacks standing or to have the right to be recognised as the owner. This protection is complemented by Article 10 of the SPA, which recognises that the right to the patent belongs to the inventor or their successors, and when the invention is made jointly, that this right belongs jointly to all of them. Article 15 of the SPA establishes that inventions made within the framework of an employment relationship or the provision of services, derived from the activity covered by the contract, belongs to the employer or contractor, thus recognising the right to exercise ownership over inventions derived from activities carried out by employees or external collaborators of the company.
Thus, an action for recovery allows any natural or legal person who has contributed to the creation of an invention, or who holds rights derived from it, to assert ownership or co-ownership in court against illegitimate registrations. As emphasised in point 11 of the ruling by the Provincial Court of Barcelona, “This action is based not only on the protection of inventive authorship, but also on the prevention of improper registrations and respect for the principles of good faith and contractual loyalty in the field of technological innovation.”
The specific issue in the case we are discussing stemmed from several factors: firstly, the fact that it was not the collaborating company, but one of its partners, who had appropriated the invention. Secondly, prior to having their rights recognised, the plaintiff companies had to prove Mr Ricardo’s involvement as the inventor of the object of the patent and the utility model. Thirdly, the relationship between Mr Ricardo, a professional of Paraguayan origin, and the plaintiff companies. Fourthly, the relationship between a series of events supported by emails, suggestions made in conversations and emails, joint meetings at which some of the aspects discussed in the correspondence were recorded. There were also tests carried out in a third-party laboratory, as well as the statements of the people who participated in them, and the statements of the defendants’ employees and inventors. The case was essentially an exercise in proving the facts on which the claim was based.
The Court cites the Supreme Court Judgment of 27 January 2022 (ECLI:ES:TS:2022:206), which establishes that the action for recovery is not based on ideas or generic contributions, but on the essential technical contribution identifiable in the claims. Likewise, in point 13, the Court recalls that: “(…) it requires not only proof of the illegitimacy of the registered owner, but also technical and documentary evidence that the patented invention is the direct result of the plaintiff’s research or inventive work. It is not sufficient to prove the contribution of general ideas or isolated elements: it is necessary to demonstrate that the invention, as a whole and with all its technical characteristics protected by the patent, clearly and substantially derives from their contribution. The purpose of this action is not to assess the patentability of the invention (novelty or inventive step), but to establish whether the ownership legitimately corresponds to the person claiming it, thus protecting the true intellectual origin of the technological creation.
In the specific case of the judgment in question, the Provincial Court of Barcelona, after examining the documentary and testimonial evidence presented in the first instance, confirmed that Mr Ricardo had been providing stable services to OPP since 2010, actively participating in the company’s R&D projects, with his continuous, coordinated and technically substantial involvement in the project, covering fundamental aspects such as technical design, testing and automation of the thermal disinfection system, and the inventive work of that professional, inextricably linked to the technical contribution of OPP and INFOPORC, such that the essential elements of the invention are the direct result of joint collaboration. This led to the defendant, Mr Sebastián, being found to have acted in bad faith in applying for and obtaining the patent and utility model titles in his own name, and to the plaintiffs being granted the right to claim recognition of their rights.
The Provincial Court of Barcelona recognised Mr Ricardo’s authorship of the patented inventions, as well as his right to be listed as the inventor. The court also recognised the right of OPP and INFOPORC to claim co-ownership of the patent and utility model that were the subject of the action for recovery. In its ruling, the appeal court recalled that registrations must accurately and completely reflect the contributions of all inventors.
As one of the few positive rulings in Spain on this issue, the ruling sets an important precedent by balancing the protection of technical authorship with the legal certainty of patent registration. It also reaffirms that the right to take action to recover industrial property rights is not extinguished by the mere passage of time in cases of fraud or bad faith.