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Thursday, 11 October 2007

Belgium strikes out against fakes and infringers, while Sweden goes for the PLT


The IPKat's Belgian friend Marius Schneider (a partner in the Brussels, Belgium firm of Eeman & Partners) has written with some good news.

Left: the real Belgian detective Hercule Poirot and, right, one of a consignment of lookalikes, probably manufactured in China and transported by truck through the Balkans before ending up for sale in the shady backstreets of Antwerp ...

Says the good Marius:

"1 October 2007 marked the entry into force of the Belgian law of 15 May 2007 on counterfeiting and piracy.

Belgium, a small country in the heart of the European Union, is notorious as a platform in the traffic of counterfeited goods. This is to some extent due to its infrastructure: the port of Antwerp is the second largest container harbour in the EU and Belgium has important freight airports like Brussels and Liège. Another reason is the lax legislation against counterfeiting in force in Belgium until now: the law in effect prior to 1 October 2007 dated back to 1879 (sic) and provided for a maximum penalty of €11,000 or a prison sentence of a maximum of just months. The entry into force of the Belgian law of 15 May 2007 radically changes this situation.

Under the new law every infringement or attempted infringement of a trade mark, patent, SPC, design right, or plant variety right will be subject to criminal sanctions. The substantive element of the offence is defined in the same way as under civil law and the infringement must be committed in the course of trade. The intent element is that of malicious or fraudulent intent (for the latter it is sufficient to show that the offender intended to profit from the infringement). Offences are punishable by prison terms of three months to three years and/or fines from €550 to 550,000. Further penalties such as the forfeiture of the infringing goods, the transfer of the mould and matrices to the injured party, the publication of court decisions and the closure of establishments are provided for.

Furthermore, every infringement of Regulation (1383/2003, by importing goods infringing an intellectual property right into the EU, will also be a criminal offence. The cross-border traffic in counterfeit products becomes a ‘customs offence’ under the General Law on Customs and Excise. Penalties will range from three months to three years and/or €500 to 500,000. In the case of contraband and the use of hide-outs, the authorities may seize the vehicles used. Anyone involved may be detained on suspicion. In the event that nobody claims ownership of the goods, or if the goods are worth less than €250, they can be seized without judgement.

Since 1 October 2007 new officers have been empowered to track counterfeiters: customs officers and agents of the Ministry of Economic Affairs are competent to carry out controls throughout the entire country. They have widespread inspection and search powers and can issue warnings and propose transactions to infringers.

The new law is expected to be a step forward in the fight against counterfeiting and piracy. Concerns have however been raised that the introduction of criminal sanctions for every infringement of an intellectual property right may lead to the criminal prosecution of honest economic operators".
Merpel says, should we tell the Belgians? The heart of Europe is not Belgium but a real hotspot - Niedermittlauer Heiligenkopf, in the district of Gelnhausen, near Frankfurt (see link here).



By PLT Notification No. 18 the Kingdom of Sweden has deposited its instrument of ratification of the Patent Law Treaty. This Treaty enters into force with respect to Sweden on 27 December 2007, bringing the number of PLT-active nations up to a satisfying 16.

The aim of the PLT is to harmonize formal procedures such as the requirements to obtain a filing date for a patent application, the form and content of a patent application, and representation.

It's good to see the Swedes go for the PLT, says the IPKat, since that country - with a very small population and VERY long winter nights - has a superb inventive record. Great Swedish inventors include Alfred Nobel (dynamite), Volvo employee Nils Ivar Bohlin (three-point safety belt for cars), Victor Hasselblad (Hasselblad 6x6 cm single-lens reflex camera), Helge Palmcrantz (the Nordenfelt machine gun), Baltzar von Platen (the father of the modern gas-absorption refrigerator) and Erik Wallenberg (the Tetra Pak carton).

Left: the IPKat samples the delights of MJAU wet cat food, kept delectably moist and fresh in its Tetra Pak package.

10 comments:

Anonymous said...

In what respect is criminalising patent infringement good news?

I was under the impression that recent EC moves make patent infringement a criminal act were criticised by all quarters (or thirds).

Gerontius

Jeremy said...

It's great news when the infringement is done with malicious or fraudulent intent, thus leaving the innocent and ignorant free to infringe until it becomes worthwhile for the patent owner to bring a civil action.

Even in England, it seems to me, there are plenty of grounds under existing criminal law under which a malicious or fraudulent trader who abuses a patent can be convicted under the criminal law. Or have I missed something?

Francis said...

I agree. It seems to me that the Fraud Act has created such a broad offence of deception that it should be straightforward to prosecute counterfeiting of any kind.

Anonymous said...

My problem with the law is that you're committing a criminal act by the mere fact that you "intended to profit from the infringement" in the words of the blog post.

That, to me, seems to go way beyond intent to defraud or deceive and appears to catch anyone who knowingly infringes in the course of normal trade.

Gerontius

Jeremy said...

What's wrong with criminalising an intentional patent infringement? In this country we criminalise lots of other things: if you "borrow" someone else's umbrella, park on a yellow line or give someone a shove on the London Underground, you're a criminal - but if you deliberately, wilfully and maliciously misappropriate someone else's IP, you're a far nobler species of human being and deserve a genteel rebuke of the civil variety.

Anonymous said...

The thing with your examples is that they are all clearly defined rules and there's rarely little doubt about whether you're on one side of the line or another.

IP is a different beast - at least when it comes to patents (and also trademarks and designs, but we'll leave those for now) where it possible to infringe without actually copying and without knowing the patent existed.

Additionally, even if you were aware of the patent you might have come to the conclusion that your activities didn't infringe - the lines of the law are far blurrier since, in essence, each patent defines it's own law of what you may not do and rarely has that law been tested in court to find its extent.

For that reason I think it is absolutely correct that (in UK law at least) damages for patent infringement have their basis firmly in the "equitable remedy" region.

So, equitable remedy is the starting point and it, to me, seems absolutely right and proper that it is the starting point. To move from that starting point and to introduce measures beyond equitable remedies - in effect punishments for infringing patents - you have to be very careful about defining the circumstances and the additional remedies that are tied to those circumstances.

Fraud, deceit, etc do seem to be good things to start adding additional remedies to, but that's because of the fraud/deceit, not because of the infringement. So there we're not actually changing the underlying equitable remedy for infringement just saying that you can't hide behind the "less serious" patent infringement charge to shield yourself from a fraud charge. As has been pointed out, these are remedies in the Fraud Act, not the Patents Act.

This Belgian law starts making patent infringement itself a crime. Where infringement has committed intentionally and with full knowledge of the patent and the high liklihood that your actions will infringe that patent, then I would feel comfortable sitting on your side of the fence and saying that a punishment would be appropriate. Indeed, for such actions, the full remedies available for copyright infringement would seem to be appropriate.

My main concern with the Belgian law is how "knowingly" might be interpreted - assuming this is an accurate translation. "Knowingly" has potentially greater reach than "intentionally". Knowingly could be intepreted broadly to mean that the infringer "should" have known and you're getting into dangerous territory there. In fact, you're possibly heading towards US territory where, as I understand it, triple damages can be awarded because the infringer failed to perform an infringement search rather than because they actively copied someone else's product. To me, that is way in excess of the sort of remedies that patent infringement should entail.

Gerontius

Anonymous said...

I think the thinking here is that it's not always clear whether you are indeed infringing a patent - there are difficult issues such as claim construction, for instance. And of course, you can never be sure that the patent is valid in the first place.

Suppose someone has a patent which specified the use of a helixical spring, and you make a device using a rubber rod with cuts in it. Would you expect a criminal record for so doing? As I understand it, the German courts found infringement in the Improver case.

Anonymous said...

There are also fields where patent enfringement is a routine part of doing research and business. The object of the exercise is to end up in a patent pool with other patent holders, because of your competing and conflicting claims. Looks like Belgium doesn't want to develop an electronics industry.

The patent system was never designed with a requirement for omniscient patent examiners. It was instead designed with the understanding that a large number of patents which should never have been granted in the first place (due to prior art that the patent examiner was unaware of) will enter the system, and will have to be resolved in court. There is always a trade-off between more thorough patent examinations and cost, but you can never produce a system which never grants bogus patents.

The reason that we don't see more problems with bogus patents is that most patents are economically worthless. By this I mean that their filers never do anything with them. They refer to research that was never commercialised for some reason or other. It is only when somebody has received a bogus patent which threatens an area where there is a lot of commercial
activity that we find out about it -- generally when accused infringers make press releases saying either 'this is an outrage, but I am paying an undisclosed sum anyway' or 'see you in court'.

And this is the way that a patent system will have to work. The only way to clear up bogus patents is to challenge them in court, and we most definitely don't want research in a field to end just because the patent office granted a bogus patent. By taking bogus patents to court, alledged infringers are doing all of us a service. But will they continue to do so when they
risk criminal prosecution?

Marius Schneider said...

I certainly understand the fears of the patent world.

I think that the situation may even be worse as far as unregistered designs and copyright are concerned, since these are not even published...

The criticism raised has been widely relayed by scholars during the various conferences organised for the entry into force of the Law of 15 May 2007. These remarks will certainly also be repeated in the articles published on the new law.

Marius SCHNEIDER
www.BorderMeasures.com

Anonymous said...

Unregistered designs and copyrighted works can only be infringed by direct copying, so I have no problem with punitive measure for infringement of those since the infringers must have known they were doing something wrong.

Gerontius

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