New German "Bill for Improving the Enforcement of Intellectual Property Rights" Ante Portas.
There are off-line rumours afloat that in the German Ministry of Justice the draughtsmen have completed their work on a first Draft "Bill for Improving the Enforcement of Intellectual Property Rights" for casting the EU Directive 2004/48/EG titled "Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights" into national German law. The new Bill would, if passed by the German parliament, affect the enforcement of German Patents, Utility Models, Trade Marks, Designs as well as Copyrights.
An important topic of EU Directive to be implemented is the "Right of information". According to Article 8 thereof, provision is as follows:
"1. Member States shall ensure that, in the context of proceedings concerning an infringement of an intellectual property right and in response to a justified and proportionate request of the claimant, the competent judicial authorities may order that information on the origin and distribution networks of the goods or services which infringe an intellectual property right be provided by the infringer and/or any other person who:
(a) was found in possession of the infringing goods on a commercial scale;
(b) was found to be using the infringing services on a commercial scale;
(c) was found to be providing on a commercial scale services used in infringing activities;
or (d) was indicated by the person referred to in point (a), (b) or (c) as being involved in the production, manufacture or distribution of the goods or the provision of the services.
2. The information referred to in paragraph 1 shall, as appropriate, comprise:
(a) the names and addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers;
(b) information on the quantities produced, manufactured, delivered, received or ordered, as well as the price obtained for the goods or services in question. [...]"
There might well be some aspects of explorative actions be present in the Bill. It appears in particular to give a great deal of attention to the implementation of these provisions of the EU Directive. In particular, the Bill is said to provide a clause to the effect that if this right of information can be satisfied only by utilisation of telecommunications traffic data in the sense of Sect. 3 No. 30 of the German Act on Telecommunications, such traffic data can be requested from telecommunications providers and exploited provided a warrant has been issued by a competent court upon request of the respective rights holder. Interestingly, such clause is said to be not only mooted for copyright enforcement proceedings but also for patent, utility model as well as trade mark based cases.
There is no doubt that, in general, the "Right of Information" as described in the EU Directive is a necessary, proved and tested legal tool for combating piracy. However, there can be too much of a good thing. Especially, it appears not to be clearly excluded that the Draft Bill would, inter alia, allow traffic data of ordinary Internet users be accessed not only for copyright enforcement purposes (already fiercely under dispute) but also for patent and trade mark enforcement cases, provided a competent court issues the required warrant. Perhaps such undertaking in the context of patent, utility model, and trade mark law might be seen as somehow overbroad and, hence, inappropriate. The German Draft Bill stresses that the enforcement of this "Right of Information" shall be limited to cases where providing such information is not disproportionate in the individual case - whatever that might mean in practice under such circumstances.
Furthermore, a right to recall infringing goods from distribution chains is arranged for.
When considering particular proposals concerning IPR enforcement, General Public should however note that already today anti-piracy clauses are present in the law. For example, the German Patents Act provides some strict anti-piracy clauses:
"[Sect. 140a]
(1) In the cases covered by Section 139, the injured party may require destruction of the product that is the subject matter of the patent and that is in the possession of the infringer or is his property unless the infringing nature of the product can be removed in some other way and its destruction would be disproportionate in the individual case for the infringer or the owner. The first sentence shall also apply in the case of a product that has been directly manufactured by means of a process that is the subject matter of the patent. (2) The provisions of subsection (1) shall apply mutatis mutandis to devices that are the property of the infringer and that are used or intended exclusively or almost exclusively for the unlawful manufacture of a product. "
"[Sect. 140b]
(1) Any person who uses a patented invention in contravention of Sections 9 to 13 may be required by the injured party to give information as to the origin and distribution channels of the product used, without delay, except where disproportionate in the individual case. (2) The person required to give information under subsection (1) shall give particulars of the name and address of the manufacturer, the supplier and other prior owners of the product, of the trade customer or of the principal, as also in respect of the quantity of products that have been manufactured, dispatched, received or ordered. (3) In those cases where infringement is obvious, the obligation to provide information may be imposed by an injunction in compliance with the Code of Civil Procedure. (4) Such information may only be used in criminal proceedings or in proceedings under the Law on Minor Offences against the person required to give information, or against a dependent person under Section 52(1) of the Code of Criminal Procedure, in respect of an act committed before the information was given, with the consent of the person required to give the information. (5) Further claims to information shall remain unaffected."
"[Sect. 142]
(1) Any person who, without the necessary consent of the patentee or the holder of the supplementary certificate of protection (Sections 16a and 49a)
makes or offers, puts on the market, uses or imports or stocks for these purposes a product which is the subject matter of a patent or a supplementary certificate of protection (Section 9, second sentence, item 1) or
uses or offers for use within the territory to which this Law applies a process which is the subject matter of a patent or a supplementary certificate of protection (Section 9, second sentence, item 2), shall be liable to imprisonment not exceeding one year or a fine.
The first sentence, item 1, shall also apply if there is a product which has been directly produced by a process which is the subject matter of a patent or a supplementary certificate of protection (Section 9, second sentence, item 3). (2) Where the offender acts by way of trade, he shall be liable to imprisonment of up to five years or a fine. (3) The attempt to commit such an offence shall be punishable. (4) Offences under subsection (1) shall only be prosecuted on complaint unless the prosecuting authorities deem that ex officio prosecution is justified in view of the particular public interest. (5) Objects implicated in an offence may be confiscated. Article 74a of the Penal Code shall apply. Where the claims referred to in Section 140a are upheld in proceedings under the provisions of the Code of Criminal Procedure with regard to compensation of the injured party (Sections 403 to 406c), the provisions on confiscation shall not be of application. (6) If a penalty is pronounced, the Court shall, at the request of the injured party and if the latter can show a justified interest, order publication of the judgement. The nature of the publication shall be laid down in the judgement."
Apart from blatant piracy cases, those criminal sanctions appear to be little used throughout German IP practice.
"[ Sect. 142a]
(1) A product that infringes a patent protected under this Law shall be subject, at the request of the holder of the rights and against his security, to seizure by the customs authorities, on import or export, in those cases where the infringement is obvious. This provision shall apply in trade with other Member States of the European Economic Community only insofar as controls are carried out by the customs authorities. (2) Where the customs authorities order a seizure, they shall advise the person entitled to dispose and also the petitioner thereof without delay. The origin, quantity and place of storage of the product, together with the name and address of the person entitled to dispose, shall be communicated to the petitioner; the secrecy of correspondence and of mail (Section 10 of the Basic Law) shall be restricted to that extent. The petitioner shall be given the opportunity to inspect the product where such inspection does not constitute a breach of commercial or trade secrecy. (3) Where no opposition to the seizure is made, at the latest within two weeks of service of the notification under the first sentence of subsection (1), the customs authorities shall order confiscation of the seized product. (4) If the person entitled to dispose opposes seizure, the customs authorities shall inform the petitioner thereof without delay. The petitioner shall be required to declare to the customs authorities, without delay, whether he maintains the request under subsection (1) in respect of the seized copies.
If the petitioner withdraws his request, the customs authorities shall lift the seizure without delay.
If the petitioner maintains his request and submits an executable court decision ordering the impounding of the seized copies or the limitation of the right to dispose, the customs authorities shall take the necessary measures.
Where neither of the cases referred to in items 1 and 2 is applicable, the customs authorities shall lift the seizure on the expiry of two weeks after service of the notification to the petitioner under the first sentence; where the petitioner can show that a court decision according to item 2 has been requested, but has not yet been received, the seizure shall be maintained for a further two weeks at most. (5) Where the seizure proves to have been unjustified from the beginning and if the petitioner has maintained the request under subsection (1) in respect of the seized product or has not made a declaration without delay (second sentence of subsection (4)), he shall be required to compensate the damages that seizure has occasioned to the person entitled to dispose. (6) The petition under subsection (1) is to be submitted to the Regional Finance Office and shall be effective for two years unless a shorter period of validity has been requested; the request may be repeated. The cost of official acts related to the request shall be charged to the petitioner in accordance with Section 178 of the Fiscal Code. (7) Seizure and confiscation may be opposed by the legal remedies allowed by the fixed penalty procedure under the Law on Minor Offences in respect of seizure and confiscation. The petitioner shall be heard in the review proceedings. An immediate appeal shall lie from the decision of the Local Court; it shall be heard by the Provincial High Court. [...]"
For trade mark and copyright matters similar provisions are more often utilised than for patent-based cases.
In any case, the provisions of the Directive 2004/48/EC as well as of the new German Bill should be judged against the current status of the legislature but not against any much earlier state where no anti-piracy provisions had been available at all.
Feel free to contact PA Axel H Horns via e-mail
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Dipl.-Phys. Axel H Horns is Patentanwalt (German Patent Attorney),
European Patent Attorney as well as European Trade Mark Attorney. In particular, he is Member of:
EU Directive 2004/48/EG titled "Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights" into national German law. The new Bill would, if passed by the German parliament, affect the enforcement of German Patents, Utility Models, Trade Marks, Designs as well as Copyrights.
