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Tuesday, 1 September 2009

Criminalising patent infringement - "barking mad"?

The BBC website today brings us the story of Trevor Baylis - "one of Britain's best-known inventors" and inventor of the wind-up radio - and his quest "to make stealing a patent a criminal offence". "That way the state, not the individual inventor, would bear the costs of going to court" to enforce the rights in a patent, explains the BBC. Mr Baylis has already written to the business secretary Lord Mandelson and has high hopes that he will be able to help.

The BBC has dutifully asked members of the Chartered Institute of Patent Attorneys for their views. Their reactions appear to range from "...I'm not sure the criminal system is well-suited to that kind of action" to calling the potentially criminalisation of patent infringement "barking mad".
This Kat is looking forward to comments from all the patent enthusiasts out there. Any support for Mr. Baylis or has this topic been discussed too often and the answers are "clear-cat"?


Anonymous said...

How about criminalizing individual inventors who can't prove a charge of infringement?

Dale B. Halling said...

In the U.S. we have criminalized violations of copyright law. If the infringement of a patent is blatant and willful, it is no different than criminal trespass, or stealing real property.

Anonymous said...

Agree that it is barking mad - but equally the criminal offences under registered trade mark law and copyright law are also barking mad! Patent owners are right to ask why they should pick up the tab for patent infringement whereas the tax payer picks up the tab for some trade mark and copyright infringements.

Anonymous said...

Beware what you wish for, for it may come true! ... and when that happens, the outcome may not be in the favour of a majority of individual inventors - for a variety of civil causes. So, let the system remain a civil for civil causes.

Mark Schweizer said...

Barking madness in Switzerland: any intentional infringement of a patent is punishable by up to one year of prison and fine, if committed "commercially" (gewerbsmässig), the punishment is up to 5 years in prison and the offence is prosecuted ex officio. I am not aware of any convictions under the provision (art. 81 Patent Act), but the law is on the books.

MaxDrei said...

Germany has criminal provisions, but doesn't use them. So they are ineffective. There is quite a lot of deliberate infringement of patents in Germany. People aren't yet afraid enough.

How about selecting a particularly blatant infringer, every once in a while, and imprisoning him, to achieve a spectacular enough Admiral Byng effect that will reduce the amount of deliberate and wilful patent infringement going on throughout the UK.

Anonymous said...

Wouldn't making infringement a criminal matter mean that the level of proof becomes "beyond a reasonable doubt" rather than a civil "balance of probabilities"? If so, unless the case is clear cut, this could have the reverse of its intended effect and make infringement harder to prove.

Anonymous said...

Marvellous, isn't it? And yet, like one of Pavlov's dogs, I cannot resist trotting out the familiar arguments!

What's "intentional infringement" as opposed to "ignorance of protected prior art", and how do we differentiate in respect of patent infringements?

How much money would the state have to pour into strategic claims of infringement made by businesses seeking to undermine their competitors?

Not to mention the time wasted dealing with every crackpot in a tin-foil helmet who thinks that Alan Sugar has stolen his idea for a fax machine (only to find out said crackpot applied for a patent but was never granted it, and doesn't understand the patent system)?

Come to that, what about the retraining of police staff to deal with such situations?

I lean towards the "barking mad" end of the spectrum. Fortunately, I think this perspective is well appreciated by UK policy makers.

MaxDrei said...

Great post from Anonymous at 8.28. If you really want a "barking mad" thought, here's one. Does Mr Baylis also perhaps want a jury to decide whether there has been criminal infringement of his patent.

Japser said...

First, stealing a document with a shining seal and a red ribbon is a criminal act probably everywhere in the world :-).

Second, the person having to pay the cost for the action in court is the losing party. It may be that Mr. Baylis is not aware of this. Personally, I find it ridiculous that the tax payer should pay such cost, instead of the party who a) infringes a patent or b) takes anyone to court at his liking just because he thinks that the scope of protection of his patent is much broader than it actually is.

The system currently in place in the EU probably fits very nicely with what Mr. Baylis thinks is righteous. Unless he intends to takes many people to court who cleverly circumvented his patent or do not infringe his patent in any other way.

So basically, Mr. Baylis would have done better by first properly informing himself.

BTW: is this cat on the photo intending to take the EQE in 2010?

Anonymous said...

At an institutional level, it is the European Commission's DG Markt, tasked with curating Europe's IP law, that seems to be most apparently pushing for criminal sanctions for patent infringement.

It is the EU negotiators who are reported to be trying to include patent issues into the secret currently ongoing ACTA treaty negotiations, against at least Canadian opposition. (

It was also the EU mandarins who tried to write criminal sanctions for patent infringement into the (currently stalled) IPRED 2 proposed enforcement directive, and who were resistant to EU Parliament efforts to exclude patents.

The public line is that DG Markt think it would be "tidier" for all IP infringements to be legislated for on the same basis.

It is also suggested that some of the lobbyists for the big pharmaceutical companies have been pushing for this, seeing it as an additional weapon they can use to put generics manufacturers on their guard, and deploy against unauthorised cross-border trans-shippers.

David said...

To the anonymous commenter above, the cat in the photo is Tufty, busy studying EPO case law. He is, unfortunately, unable to take the EQEs due to not meeting the overly stringent requirements.

Anonymous said...

In response to anonymous at 9:51 - what you say in respect of DG Markt may be true, but they are not tasked with curating Europe's IP law, whatever they may think. Patent law remains (for the overwhelming part) a matter of national competence, and European countries are free to administer their own laws. There are certain areas where competence is mixed, due to European agreements on Biotech and on trade, but these don't devolve much regulatory power to Europe in this field. Many member states have opposed the inclusion of patents in any counterfeiting/criminal sanction agreements, such as ACTA, for the reasons given in previous posts.

The Commission may call for it, but it will never achieve it (and it is unlikely it will ever have the power to actually be involved in such a decision, unless a European patent is created and Community competence is granted for this field of IP).

Gerontius said...

I'm of the "criminalisation is barking mad" school of thought. However, all of the language used by Baylis is about "nicking patents". Meaningless a phrase as that is, I assume he's getting at the people making direct knock-offs, not the innocent infringers.

Do people think there's room for an additional penalty if it can be shown/proved that the infringement arose as a result of copying? Not a US-style situation where the infringer has to show due diligence in searching for patents, but if it can be shown that the infringer knew of the patent and knew they were making a knock-off product, how about strengthening the current law, perhaps even to the level of criminalisation?

I stress that I think the UK's system of equitable relief is by-and-large excellent. But is it suited to every set of circumstances? Would really like to know what people think.

MaxDrei said...

Valuable comment from Anonymous at 9.51. If even the specialist Directorate of the EU Commission is unable to distinguish between a dishonest counterfeiter and an honest generics manufacturer, heaven help us when politicians start debating the issue whether patent infringement, as such, is a criminal act.

Anonymous said...

As is apparent from his implied belief in the magicking of the corresponding and non-trivial extra tax burden out of thin air, I don't believe Mr Bayliss has been appraised of this government's financial commitments lately... Wouldn't be so bad if the proposal was made, equitably, on the back of a correspondingly non-trivial hike in renewal fees for private inventors, I suppose (evil smiley icon)

Anonymous said...

Jasper - First, stealing a document with a shining seal and a red ribbon is a criminal act probably everywhere in the world :-). I agree with you.

A patent gives the proprietor the right to stop a third party doing what is protected by the patent. I think that TB is referring to somebody working the invention that is the subject of the patent. If somebody does that, there are not 'stealing the right of the proprietor to stop others.' The phrase 'stealing a patent' is not a great one. Typical of misconceptions of the system....

Anonymous said...

I understood that the German system of criminal liability came into play following a finding of patent infringement such that continued infringement became a criminal act. Essentially the same in the UK where contempt of court would potentially arise following an injunction.


MaxDrei said...

EdT you may well be right. What you write makes sense, as a matter of practice. How else will the authorities be confident enough to put you in prison? I just don't see it yet, in my English translation of Article 142 of the German Patent Act, entitled "Criminal Provisions" and reciting "up to three years" of "imprisonment" (or five years, if the infringement is "on a commercial basis").

Mark Schweizer said...

To the anonymous commenter who said "Wouldn't making infringement a criminal matter mean that the level of proof becomes "beyond a reasonable doubt" rather than a civil "balance of probabilities"?":

in most civil law countries, such as Germany or Switzerland, the standard of proof in criminal and civil cases is the same. Preponderance of the evidence is only sufficient for preliminary measures. Common law jurists find this very hard to understand, and I have to admit that it is difficult to justify. It may help explain, though, why civil law countries have less issues with criminalizing patent infringement.

On a side note: the Swiss patent law provides that the criminal court suspends the proceedings if the defendant claims the invalidity of the patent and sets a delay for the defendant to file a nullity suit before a civil court. If, on the other hand, the patent has not been examined for novelty and inventive step (as is the case with national Swiss patents) and its validity seems doubtful, the patentee must file a civil action for declaration of validity (see art. 86 Swiss Patent Act). If it's madness, it's elaborate madness...

Paul said...

I hope that Mr. Baylis thinks through his inventions more thoroughly than his legal ideas.

Because of the punitive nature of the remedies for a criminal offence a conviction requires proof beyond an reasonable doubt, including proof that the person intended to “nick his patent.” In the experience of the Canadian Competition Bureau criminal remedies for Competition Act offences have not worked well as the burden of proof is too high. They have been moving away from criminal sanctions for some time (see recent efforts at: ).

Further proving intent to infringe when the boundaries of patents and other IP are so inherently fuzzy would be even more difficult. Bessen and Meurer have a good book out on why IP and its boundaries do not fit well in property rules designed for tangible property( ).

Perhaps Mr. Baylis should present his idea to the Pirate Party. Once they catch on I am sure that they will be very supportive.

Japser said...

At Anonymous @ 11:35:

"Typical of misconceptions of the system...."

I wholeheartedly agree. The same applies in my opinion to intellectual property in general. In particular copyright holders lover to use the word "stealing".

You can, of course, think like Thomas Jefferson: "He who receives an idea from me receives it without lessening me, as he who lights his candle at mine receives light without darkening me."

Personally, I do not think this principle is a very feasible one, in particular not when an invention originates from a (multi) million Pound/Euro research investment.

But there is a line in between those two stands and in my opinion, it is closer to Jefferson's statement than to that of Trevor Baylis. Please bear in mind that applying for a patent comprises the obligation of publication - so others can benefit from your invention.

As explained before, the current EU system of apportionment of cost in IP enforcement actions is something that Mr. Baylis - and many others, including tax payers - will benefit most of compared to other systems.

Anonymous said...

Infringint the IP right is like trespassing the property, and claim is like a fence.

The criminal law protects the weaker, and trespassing is punished when it means an insult into personal sphere, such as armed robbery or burglarry; on the other hand - if someone trespasses an acre of land owned by certain factory, the quards of the factory will have to catch him, not the police.


Anonymous said...

This suggestion was made by Mr Baylis the inventor of the the wind-up radio!

It's a wind-up!

Tim Jackson said...

A comment above raised the EU's IPRED 2 proposal to criminalise patent infringement.

One of the arguments raised against it at the time was that it would make it difficult for manufacturers to get reliable advice about whether they will infringe the patent that they just discovered yesterday (perhaps near the end of several years and millions of pounds of development work on a new product).

If their patent attorney says "the patent is invalid, go ahead and infringe it", then potentially he/she could be personally guilty of aiding and abetting a crime, and therefore at risk of a fine or a prison sentence. Nobody is going to take the risk of giving professional advice in such circumstances.

It was also argued that IPRED 2's criminal sanctions would give disproportionate power to owners of patents of dubious validity. At present, if a patent appears invalid, people can take the risk of ignoring it. So the harm to society of an invalid patent is kept within reasonable bounds. But it's not hard to imagine that a lawyer's letter threatening a possible prison sentence will radically change the dynamics of the issue.

When English lawyers pointed that out, I was told that the Germans couldn't understand the problem. Presumably that's because they've had criminal sanctions for years, but they are never used. Am I right in thinking that in Germany, any criminal prosecution would be entirely up to the public prosecutor, not the patent proprietor? In the UK, by contrast, a patent proprietor would be able to commence a private criminal prosecution. Clearly some would do so as a chilling litigation tactic.

Steve Jones said...

This is not an issue of "natural justice", like dealing with the theft of tangible assets. That's a false analogy by Trevor Baylis. The patent system, which is essentially a legalised monopoly, was introduced to encourage innovation. By its very nature it limits competition so we need to be very careful before we extend its scope and sanctions for infringement.

For the vast majority of human history, any protection of ideas was purely that of powerful institutions; the church, craft guilds and so on. The danger is that the extension of ever stronger IPRs is that we will sleep walk back into the position where powerful institutions (essentially corporations) gain enormous power.

Of course this particular idea of criminalising patent violations is wholly unworkable. Firstly, unless it was made a "strict liability" offense, the prosecutors would have to prove intent, or at least reckless behaviour. Proving that when there are so many grey areas regarding the scope and applicability of patents is going to be difficult.

Let's now assume that somebody did pass such a law. Quite what will the effects be on innovation? Every time a company comes up with a new product, not only is the amount of patent research going to have to be vastly increased, there there is going to be a lot more expenditure on legal advice over potential patent infringement - an area often fraught with problems and where it is often impossible to provide definitive advice. Such are the extra costs and potential risks involved, then it's very easy to imagine that many valuable products will either not make it to market or be greatly delayed.

As it is, the US patent system (especially) is plagued by many of these issues without bringing criminal sanctions into play.

Perhaps something can be done about the imbalance between large corporations and small innovators, but bringing criminal sanctions into this area is likely to be counter-productive and, very likely, will change the balance more towards large corporations. The latter can afford the lawyers, and the criminal liabilities are unlikely to be to individuals. The same cannot be said over individual inventors and small companies.

MaxDrei said...

Good comment there from Jones. Something can be done for David, faced with Goliath: enforcement proceedings that are economical and fast. Why hasn't Mr Baylis (David) been to see a law firm like Wr.... & Co, which years ago was trumpeting insurance-protected, contingency fee driven litigation, that ought (in theory) to have even the most ugly Goliath quaking in his boots. I'll answer my own question. That would be taking a sledgehammer to crack what I suspect was for Wr.... an uninteresting nut. What do you say, Mr Baylis?

Rob Harrison said...

One of the effects of the criminilisation of patent infringement in Germany is that you can ask the Staatsanwalt (public prosecutor) to help you with your patent infringement case. Some won't, but others do.....

Of course we don't have juries in Germany deciding on criminal matters and so there is no chance of 12 laypersons deciding on complicated matters of patent law - just three non-technically trained judges (and the poor Staatsanwalt who you roped into your case).

MaxDrei said...

Rob, does "help" from the Staatsanwalt include leverage, to get hold of crucial evidence? With no discovery, that's often a problem in Germany, isn't it? Or is the Enforcement Directive helping more than the Staatsanwalt?

Ilya Kazi said...

Cast your mind forward to the news 10 years hence...
We report on the case of the Munich 3 being pardoned after 5 years behind bars when the EPO Board of Appeal found that a holiday snap had come to light substantiating the prior use of the bucket and spade at the beach, pleaded unsuccessfully at trial, and in any event that a cleaner at Brighton and Hove library had placed document 17 sufficiently close to the window that the headnote could be read on the Sunday before the priority date, so the patent for infringement of which they were incarcerated had been revoked with retrospective effect.
Over in the Kingdom of Wales, the Newport 7 were ecstatic when Jacob LJ sitting on the privvy council on Appeal from Cardiff crown Court, overturned an initial finding of Neuberger J holding that a requirement for a particular element to be "substantially vertical" was met by a device having a 30 degree tilt to the vertical. Jacob LJ found instead that, construed purposively, incarceration should only apply in the case of an infringing device where the element in question is angled at no more than 10 degrees, with waterboarding and gential mutilation confined to angles of less than 2 degrees, with a tilt between 10 and 20 degrees meriting only a fixed penalty and/or 3% penalty points royalty on a licence of right (with guidance notes for magistrates that attendence at a remedial Infringement and Validity course to be run by Queen Mary College may be ordered in the case of a professional footballer or minor celebrity or reality show contestant whose counsel pleads mitigating circumstances, or diminished ability to measure angles due to inebriation).
Meanwhile, The Hague 4 have dropped their longstanding appeal for their alleged "manufacture of unstable compound X for use in any generally annoying manner" to be commuted to a lesser generic terrorist charge of "conspiracy to cause explosion causing widespread loss of life" which carries an automatic pardon after 5 years in Belmarsh, now spent, in the event it is conducted on behalf of a country with whom dimplomatic relations has become important when it transpired that, due to the instability and limited shelf life of the compounds concerned, to assemble all the ingredients sufficiently quickly to cause any material harm would have necessarily implicated them for "seriously contemplating exceeding the speed limit on a motorway" between the respective storage locations of the components, which carries a sentence of mandatory life imprisonment without parole. They are now arguing on Appeal that the use intended was only intended to be "mildly vexatious or even possibly entertaining and/or diverting" and thus does not infringe the use claim which requires genuine annoyance, the compound itself being known and well documented as causing irritation.

Reinier Bakels said...

The Dutch patent act always contained a criminal provision. When a new Dutch patent act was introduced in 1995, the government proposed to remove the provision, but the parliament insisted to keep it in, allegedly for the benefit of SMEs who could not afford an attorney.

But actually it is hardly ever used. Public prosecutors lack patent skills, and firms (even SMEs) don't seek "revenge" by putting their infringing competitors in jail.

The real risk are police (and customs) authorities who may not know that they know too little to act properly in patent infringement cases!

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