On October 3 2011 the Valencia Appeal Court confirmed the sentence given by Valencia Criminal Court No 12 on July 13 2011 to Mr MLM, sole administrator of PT, for an IP crime as set out in Article 273 of the Criminal Code (patent infringement), sentencing him to:

  • six months' imprisonment;
  • a 12-month penalty payment of €10 a day; and
  • payment of the damages and legal costs incurred.

MLM's sentence was based on the fact that he had imported two batches of products that infringed the essential patents of Italian company Societa Italiana Per Lo Sviluppo Dell Ellectronica Sisvel SpA, while being aware of its exclusive rights.

Sisvel, a licensee of several essential patents (those included in the standards followed by manufacturers when producing goods), had asked Customs to seize all products incorporating the technology protected by such patents without its consent. The conflict arose when Sisvel was informed by Valencia and Gandia Customs of the retention of two batches of products which could infringe such essential patents. After checking the documents provided by Customs regarding the exporter and the importer of the seized products, Sisvel concluded that they did not come from a licensee and had not been purchased by a licensee. Accordingly, Sisvel filed a criminal complaint against the importer in order to defend its exclusive rights in the patents.

After analysing the evidence filed by the parties and the conclusions presented in the hearing, the court considered that all of the requirements of Article 273 of the Penal Code had been fulfilled.

Regarding the objective element, the court considered that:

  • MLM, through PT, had imported two batches of products using technology protected by Sisvel patents with the intention of commercialising them in Spain; and
  • the two batches of products had been purchased in China from companies which were not Sisvel licensees; accordingly, they had been imported without Sisvel's consent.

With regard to the subjective element, in response to the defendant's claims that he was unaware of the patent rights and did not actually manage PT, the court considered it to have been proven that MLM had, through PT, imported the infringing products without Sisvel's consent with the aim of avoiding the payment of royalties to Sisvel and with the intention of alleging his ignorance of the patent rights if the products were seized by Customs.

Specifically, the court dismissed the defence as follows:

  • The court dismissed MLM's claim of ignorance of Sisvel's rights since it had been proven that he had more than 20 years' experience in the electronic goods sector and that the Sisvel patents are widely known in this field.
  • The court rejected the argument that MLM was not in charge of the management of PT since it considered that MLM was the sole administrator of the company and controlled both its daily activities and its import policy.

In addition, the court highlighted that according to Article 31 of the Criminal Code, since the defendant was the sole administrator of PT he was the only person who could be responsible for any criminal offences which might be committed through such company.

For further information on this topic please contact Leticia Lloret at Grau & Angulo by telephone (+34 91 353 36 77) or by fax (+34 91 350 26 64) or by email ([email protected]).