12.11 Criminal proceedings
Patent owners may also defend their rights by bringing criminal actions. Article 70 of LP-2015 provides that the owner of a patent may bring “appropriate action of any type or nature.” This formulation encompasses criminal actions.
LP-2015 applies exclusively to civil actions, that is, only to those that may be brought before civil courts. Criminal actions are covered in the Criminal Code.126 Procedures for patent cases do not depart significantly from the general provisions for criminal proceedings, as set out in the Criminal Procedure Law.127
Patent-related criminal offenses are defined in Article 273(1) and (2) of the Criminal Code. Article 273(1), referring to patented products, provides for a prison term and a fine for any person who manufactures, imports, stocks, uses, offers or brings onto the market subject matter covered by a patent or utility model, provided that they do so:
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for industrial or commercial purposes;
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without the consent of the owner; and
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knowing that the patent or utility model is registered.
Article 273(2), relating to patented processes, covers offenses committed by persons who make or offer use of such processes, or who stock, offer, bring onto the market or use products directly obtained by means of such processes. To qualify as criminal offenses, such acts must meet the same three conditions indicated in the preceding paragraph.
A significant portion of the literature on this topic criticizes the conflation of civil and criminal law protections against the same conduct, both as punishable under the Criminal Code and as a basis for civil actions under the law on patents (LP-2015).
The conflation is not total, however. Acts of indirect infringement and the importation of products directly obtained from patented processes are actionable under civil law128 but not under criminal law.
In addition, protection under criminal law applies only where fraudulent intent is involved, which need not be found for civil actions to succeed against the manufacture or importation of patent-protected objects or the use of patented processes.
And lastly, protection by means of civil proceedings, the patent holder is entitled to claim reasonable and adequate compensation from any third party who, between the date of publication of the application and the date of publication of the grant of the patent, has carried out a use of the invention that would be prohibited under the patent.129 The protection by criminal law is only recognized only after the patent has been granted.
In practice, therefore, the preferred option for patent protection in Spain is through the civil courts.
From a procedural standpoint, Organic Law No. 15/2003130 introduced a series of measures still in place to strengthen protection for industrial property rights under criminal law, including:
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elimination of a condition requiring a prior complaint by the injured party as a requirement for prosecution of the offense, which can thus be initiated ex officio; and
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inclusion of industrial property infringements among the offenses qualifying for expedited trial proceedings.131
Article 276 of the Criminal Code provides for harsher penalties where offenses are of particular seriousness, due regard being had to the value of the unlawfully produced objects or to the particular importance of the prejudice caused, or where the perpetrator belongs to an organization or association dedicated to this type of conduct, or where minors under the age of 18 are involved in committing the offense.
Article 277 of the Criminal Code establishes a special regime for cases involving secret patents.
Article 288 of the Criminal Code provides specific forms of punishment for offenses committed by legal persons, including the temporary suspension of their activities, the temporary closure of premises and establishments and dissolution of the public entity concerned.