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Making every wilfull patent or utility model infringement a criminal offence would effectively discourage the dissemination of patent documents - managing directors or members of the Board would likely think twice before they read any patent document if this could make the difference between payment of compensation of damages, on the one hand, and going to jail, on the other hand.

It's actually worse than that. In criminal law, one is supposed to "know the law" (one cannot plead ignorance of the law in criminal cases). Therefore, criminalising patent infringements means that everyone is supposed to know all patents out there and, indeed, is able to clearly assess the scope and validity of their claims.

Additionally, "willful" does not mean "knowingly" in criminal law. It merely means that you did not perform the act (which happened to be criminal) accidentally, but consciously. I.e., if one writes a program which infringes on a software patent, then this program will always be written consciously (one cannot "accidentally" write a computer program), and therefore if it infringes on a patent then this will always be a willful infringement in the sense of criminal law.

Knowing about the patent or reading it does not even enter the picture... Our analysis contains more information.
 
 

 

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I fully agree with the comments made by Jonas Maebe. And I'd like to add a few more.

The essential flaw in the Commission's reasoning is the assumption of a Common Market for crime. Will organised criminals look for the member states with the lowest (statutory) punishments? No! Among criminologists it is a well-known fact that if deliberately a particular country is selected, it is on the basis of the chance of being caught. And this is exactly something the Commission can not harmonise. Priorities for criminal prosecution are actually set by national public prosecutors. And the policy for IP infringements has always been: private law route first! This is the official policy of the Dutch public prosecution office ("OM") (except for massive fake products intercepted at the customs). Taxpayer paid resources should not be used to "subsidise" commercial companies. This is one explanation why the present criminal provisions in the Dutch patent act (art. 79 ROW) is never used. The other is that the alleged "victims" of infringement - if they are not sadists - don't want to jail their competitors, they want compensation and/or injunctions.

I would be very curious to hear whether the criminal provision of the German patent act (§ 142 PatG) is ever used. This provision is better than the Dutch provision because it requires a complaint by the patent owner ("Antrag"). This reminds us that in The Netherlands, patent infringement theoretically could be prosecuted against the will of the patent owner!

I am also very concerned about the proposed "joint investigation teams". Could this mean that bodies such as the BSA get formal prosecution authority? Deterrence is a cornerstone of criminal law, but it should not end in "state terrorism".

As Jonas points out on his web page (see hyperlink), criminal law requires precise provisions. This is the famous lex certa and lex scripta principle. If these principles are adhered by, substantive intellectual property law must be changed extensively if any commercial scale infringement is criminalised, inevitably reducing the rights of the rights owner. This is no less than a human rights matter.

Imho the TRIPS provision is exactly right: only copyright piracy and trademark counterfeiting are crimes.

There is presently much debate whether the proposed directive meets the subsidiarity rules, i.e. whether the Commission is allowed at all to interfere in national criminal law in this case. Unfortunately, politicians don't seem to be aware that the substance of this directive is outright ridiculous.
 
 

 

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@Jonas Maebe:

Present German Patent Act says (Sect. 142):

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)

1. 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

2. 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 three years 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 offense shall be punishable.

(4) Offenses 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 offense may be confiscated. Section 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 judgment. The nature of the publication shall be laid down in the judgment.

The important point seems to be that up to now in Germany patent infringements are only to be prosecuted on complaint unless the prosecuting authorities deem that ex-officio prosecution is justified in view of the particular public interest. Contrary, under the proposed Directive Member States would have to ensure that the possibility of initiating investigations into, or prosecution of, offences are not dependent on a report or accusation made by a person subjected to the offence, at least if the acts were committed in the territory of the Member State.

There have been no criminal cases concerning patent infringement reported by the Reichsgerichtshof / Bundesgerichtshof since 1933. I do not know the statistics of lower Courts but crimonal proceedings concerning patent infringement are currentl very, very rare.

If the "Crown Prosecutor" ("Staatsanwalt") should ever be obliged to open criminal proceedings on each and every patent infringement allegation provided that there is some likelyhood that the infringement was intentional, then the entire landscape of patent enforcement will change.
 
 

 

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According to the doctrines of applicable German law, the subjective elements of an offence by infringing a patent comprise that the act was committed intentionally.

As far as I understand commentary literature, an error concerning validity and/or scope of a patent in question may, according to present German law, well qualify as an error of established fact contravening intention ("Tatbestandsirrtum").

So, it is true that if one writes a program which infringes a patent, then this program will always be written consciously (one cannot "accidentally" write a computer program). But if the programmer truly didn't know anything about that very patent that was infringed e.g. by selling the software or if he did some bona fide mis-assessment of its scope, this might well qualify as an error of established fact contravening intention. But this excuse diminishes if, in this example, the programmer carefully reads each and every patent document within reach concerning the particular area of technology, gets advice etc. from a patent attorney, and eventually clearly recognises that he in fact is committing a patent infringement.