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TITLE XI INVALIDATION AND FORFEITURE OF PATENTS Chapter I Invalidation 112. (1) A patent shall be declared invalid in the following cases: (a) when it is proved that, in respect of the subject matter of the patent, one of the conditions of patentability contained in Title II of the present Law has not been met; (b) when the invention is not described in a sufficiently clear and comprehensive manner to allow a person skilled in the art to carry it out; (c) when the subject matter goes beyond the content of the patent application as filed or, where the patent has been granted as a result of a divided application or of an application based on the provisions of Article 11, when the subject matter of the patent goes beyond the content of the original application as filed; (d) when the owner of the patent had no right to obtain the patent in conformity with the provisions of Article 10(1). (2) Where the causes of invalidation only affect part of the patent, partial invalidation shall be declared through annulment of the claim or claims affected by those causes. Partial invalidation of a claim may not be declared. (3) Where invalidation is partial, the patent shall continue in force for the claims that have not been annulled, provided that it can constitute the subject matter of a separate patent. 113. (1) Any person who considers that he has suffered prejudice, as well as the Public Administration [Administracion Publica], may request a declaration of invalidation. In the case provided for in paragraph (1)(d) of the preceding Article, however, only the person authorized to obtain the patent may seek a declaration of invalidation. (2) An action for invalidation may be brought during the legal term of a patent and during the five years after its forfeiture. (3) An action shall be brought solely against the registered owner of the patent at the time of submitting the request and it must be communicated to all the persons owning rights in the patent and duly entered in the Register so that they may appear and take part in the hearing. (4) The invalidation of a patent may not be sought before the civil jurisdiction on the same grounds as those that have already been the subject of a judgment on its substance through contentious administrative channels. 114. (1) A declaration of invalidation shall imply that the patent has never been valid and that neither the patent nor its original application have had any of the effects provided for in Title VI of the present Law, to the extent to which invalidation has been declared. (2) Without prejudice to compensation for damage and prejudice that may be due when the owner of the patent has acted in bad faith, the retroactive effect of invalidation shall not affect the following: (a) decisions on infringement of the patent that have become res judicata and have taken place prior to the declaration of invalidation; (b) contracts concluded before the declaration of invalidation, to the extent that they were executed prior to the declaration. However, for reasons of equity and to the extent justified by the circumstances, restitution of the amounts paid under the contract may be claimed. (3) Once it has become final, the declaration of invalidation of a patent shall become res judicata in respect of all persons. 115. The declaration of invalidation of a patent shall not necessarily imply the annulment of the additions thereto, provided that an application is made to transform them into separate patents within three months following notification of the declaration of invalidation. Chapter II Forfeiture 116. (1) Patents shall be forfeited in the following cases: (a) at the expiration of the period for which they were granted; (b) renunciation by the owner; (c) failure to pay a fee within the time limit and, where appropriate, failure to pay the corresponding surcharge; (d) failure to work the invention within two years following the grant of the first compulsory license; (e) failure to fulfill the obligation to work the invention as specified in Chapter I of Title IX when the owner of the patent does not benefit from the provisions of the Paris Convention and is usually domiciled or has his industrial or commercial establishment in a country the legislation of which permits the adoption of such a measure. In such cases, the provisions concerning the granting of licenses contained in Chapter III of Title VIII and in Chapters II, III and IV of Title IX shall not apply. (2) Without prejudice to its declaration by the Registry of Industrial Property and its publication in the Official Bulletin of Industrial Property, forfeiture of a patent shall mean that the patented object falls within the public domain from the time at which the facts or omissions causing its forfeiture occurred, with the exception of those parts where this object is protected by an earlier patent still in force. (3) Where there is failure to pay an annual fee, it shall be understood that the omission giving rise to the patent's forfeiture occurred at the beginning of the year for which the annual fee was not paid. (4) In the case specified in paragraph (1)(d), above, the forfeiture of the patent shall be declared following examination by the Registry of Industrial Property of the corresponding administrative documentation. 117. (1) A patent the forfeiture of which is due to failure to pay an annual fee may be restored if the owner proves that failure to pay was due to reasons of force majeure. (2) The claim of force majeure may only be brought during the six months following the publication of the forfeiture of the patent in the Official Bulletin of Industrial Property and it shall be published in the said Bulletin within a period of one month so as to allow any interested party to formulate observations thereon. (3) Where appropriate, restoration shall be granted by the Registry of Industrial Property, without prejudice to the rights of third parties arising from the patent's forfeiture. The recognition and scope of such rights shall be within the competence of the ordinary courts. (4) For restoration to take effect, the owner of the patent shall pay the annual fee remaining unpaid and the corresponding surcharge. 118. (1) The owner may renounce the patent as a whole or one or various claims therein. (2) Where the patent is partly renounced, it shall continue in force in respect of those claims not included in the renunciation, provided that they constitute the subject matter of a separate patent and that renunciation does not involve extending the scope of the object of the patent. (3) Renunciation shall be communicated in writing to the Registry of Industrial Property and shall be deemed to have effect from the date of its entry in the Patent Register. (4) The owner may not renounce a patent for which effective rights or licenses are recorded in the Patent Register without the consent of the owners of the said rights. (5) A patent the ownership of which has been claimed by a third party may not be renounced without the latter's consent.

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