22 August 2005

Porridge for Patent Infringement?





For readers who may not be familiar with British colloquialisms "porridge" means prison as well as a hot breakfast cereal emanating from Scotland. "Porridge" was the title of a popular sit-com about prison life which appeared on BBC television just over 30 years ago.

The reason for the title is that the Patent Office has invited comments on 18 August 2005 on a proposal by the European Commission for a directive on criminal measures aimed at ensuring the enforcement of intellectual property rights and a framework decision to strengthen the criminal law framework to combat intellectual property offences. Art 3 of the Proposal would require member states to
"ensure that all intentional infringements of an intellectual property right on a ommercial cale, and attempting, aiding or abetting and inciting such infringements, are treated as criminal offences."

It would appear that the proposed requirement would apply not just to bootlegging, counterfeiting and piracy that are already criminal offences in the UK and elsewhere, but also to unregistered design right, registered design and patent infringement. Indeed, there is no obvious reason why it should not also apply to breaches of confidence which would further complicate an area of the law already complicated by the Human Rights Act 1998. Since the proposal was first published on 19 July 2005 it has already been discussed by Urs Gasser and others in the USA. The early comments from across the Atlantic are not particularly encouraging.

This is the second attempt by someone in the Commission to criminalize any kind of intellectual property infringement in little over two years. The previous proposal of 30 January 2003 (
Proposal for a Directive of the European Parliament and of the Council on measures and procedures to ensure the enforcement of intellectual property rights) contained a similar provision. Art 20 (1) of the proposed directive would have required member sates to

"ensure that all serious infringements of an intellectual property right, as well as attempts at, participation in and instigation of such infringements, are treated as a criminal offence. An infringement is considered serious if it is intentional and committed for commercial purposes"

That article was dropped from the text that was adopted by the Council (Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights OJ L 196/16 2.6.2004). In submissions that I drafted on behalf of the Chartered Institute of Arbitrators to the previous Patent Office consultation on I pointed out some of the legal and practical difficulties of extending criminal liability beyond counterfeiting and piracy.

While extending criminal sanctions to patent and other types of intellectual property infringement would be very popular with many of the small business people and individual inventors who consult me, there are two substantial objections. The first is that criminal liability requires both a mens rea (blameworthy mind) as well as an actus reus (blameworthy act). The problem with intellectual property infringement is that it is possible to believe quite honestly and reasonably that a patent claim or other right is not valid or that on the true construction of the claim that it has not been infringed. Secondly, one of the reasons for criminalizing counterfeiting and piracy is to protect consumers from fake goods. That does not always apply to other types of intellectual property infringements. Medicines for poor people in Africa are one example that springs to mind. There are lots of practical difficulties such as who would enforce this legislation in the UK, whether juries and magistrates would have patience with the issues, the possibilities of circumventing art 27 of Council Regulation (EC) No 44/2001 of 22 December 2000 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (OJ L 12 , 16/1/2001 1 - 23) and much, much more.

The Patent Office has invited responses to Jeff Watson by 26 September 2005. I hope that there will be quite a lively debate.

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