For the half-year to 30 June 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Alberto Bellan, Darren Meale and Nadia Zegze.

Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Wednesday, 6 June 2012

Patent infringement: is it a crime where you are?

"It wasn't my fault", said
Pinky, "I was only trying
it out to see if it worked ..."
An anxious reader of this weblog -- who for all we know may , while you are reading this, be contemplating committing his very own patent infringement -- has asked the IPKat if he can advise him as to which countries, particularly inside the European Union but even elsewhere, make it a criminal offence to infringe someone else's patent.

This Kat seems to recall that there was quite a bit of debate back in 2007 about whether it was a good thing or a bad thing to  impose criminal liability on patent infringers, this all being within the context of a proposed IP Criminal Enforcement Directive which all seems to have gone very quite of late. Trade mark and copyright infringements are criminal acts in many countries if done for commercial gain, but the Kat doesn't think there's so much patent-specific criminal law around.

Can any readers who come from countries where patent infringement is a criminal offence, or who have any useful knowledge about places that do, please post their information below.

30 comments:

Moose said...

In Norway intentional patent infringement is a crime punishable with fines or imprisonment up to three months, cf. Norwegian Patent Act Section 57. (English translation available at: http://www.patentstyret.no/en/For-Experts/Patents-Expert/Legal-texts/The-Norwegian-Patents-Act/)

Antoni Romani said...

Dear friends,

SPAIN is a country where patent infringment is considered as a criminal offence also.
Antoni Romaní
aroman@romani-martinez.com
www.romani-martinez.com

Anonymous said...

In Germany patent infringement is a crime, punishable with up to 5 years imprisonment (Para. 142(2) Patentgesetz). (But prosecution for patent infringement is of course extremely rare.)

As far as I know the UK is among few countries where patent infringement is not a crime. What's the situation in Commonwealth states and other common law jurisdictions?

Hanne Kirk Deichmann said...

In Denmark intentional patent infringement is a crime punishable with fines or imprisonment up to 1½ year (Danish Patent Act Art. 57)OR up to 6 years (Penal Code art. 299 b) in aggravating circumstances.

V. Stoilov said...

In Bulgaria, the only texts concerning criminal liability for infringement of patents are:

Criminal Code
Article 173
(1) A person who publishes or uses under his own name or under a pen name the work of another person in the field of science, literature or arts or a considerable part thereof, shall be punished by deprivation of liberty for up to two years or by a fine from BGN one hundred to three hundred
(2) By the same punishment shall also be punished the person who presents for registration or registers in his own name invention, workable model or industrial design of another person.
Article 174
A person who, by abusing his official position, gets himself included as a co-author of an invention, workable model or industrial design or of a work of science, literature or arts, without having taken part in the creative work for its elaboration, shall be punished by deprivation of liberty for up to two years or by a fine from BGN one hundred to three hundred, as well as by public censure.

For other intellectual property rights exist more serious punitive measures.

Anonymous said...

In Hungary the Section 329/D. of the Criminal Code provides the following:

Violation of Industrial Design Rights

(1) A person who violates the right of the holder of a patent, plant variety, certification of supplementary protection, trademark, geographical indication, design rights, utility models or topographies conferred on the basis of an act, promulgated international convention or Community legislation by imitating or copying the subject matter of protection, and thereby causing financial injury, is guilty of a misdemeanor punishable by imprisonment of up to two years.
(2) The punishment for a felony shall be imprisonment for up to three years if the violation of industrial design rights:
a) results in substantial financial injury;
b) is committed in a pattern of business operation.
(3) The punishment shall be:
a) imprisonment of up to five years if the violation of industrial design rights results in particularly considerable financial injury;
b) imprisonment between two to eight years if the violation of industrial design rights results in particularly substantial financial injury.

fidel porcuna said...

The Spanish Criminal Code (art. 273) provides that the unauthorised manufacturing, import, possession, use, offering, or introduction of the goods protected by a patent, utility models, designs or topography rights with industrial or commercial purposes may amount to a criminal offence provided the defendant is aware of the registered rights. Fines up to 24 months and imprisonment up to 6 months are set forth in the Criminal Code for such offences. Aggravating circumstances might be relevant to increase the penalties (employment of minors, etc.)

Regards,
Fidel Porcuna
fidel.porcuna@twobirds.com

MaxDrei said...

I recall the recent uproar (in the context of the EU patent) about bifurcation, and the prospect in Germany of getting relief from patent infringement years before the asserted patent is finally found to be invalid. Normally, it is injunctive relief that the patent owner seeks. But getting the miscreant (Samsung CEO perhaps) committed to prison till the BGH finally finds the patent bad would certainly add extra spice. What level of compensation would be in order, I wonder, when that happens.

Mark Groen said...

The Duth Patent Act (Art. 79(1) and (2)) stayes that patent infringement is a criminal act. It is punishable with a fine and imprisonment. Up to six months imprisonment for a single fact of infringement and up to four years if the infringement takes a "professional form" (making a living out of it). As far as I know these articles have never been put to use though.

Sandra Martins Pinto said...

In Portugal patent infrigement is also a criminal offence. According to Article 321 of the Portuguese Industrial Property Code:

Article 321
VIOLATION OF PATENT EXCLUSIVITY, THE UTILITY MODEL OR THE SEMICONDUCTOR TOPOGRAPHY
The following acts, carried out without the consent of the
holder of the respective right, are punishable by a prison sentence of up to three years or a fine of up to three hundred and sixty days:
a) Manufacture of artefacts or products that are covered by the patent, the utility model or the semiconductor topography;
b) Use or application of means or processes that are the object of the patent, the utility model or the semiconductor topography;
c) Import or distribution of products obtained through any of the aforementioned methods.


Other relevant articles in this respect are Articles 324 and 330:

Article 324
SALE, CIRCULATION OR CONCEALMENT OF PRODUCTS OR ARTICLES
The act of selling, putting into circulation or concealing counterfeit products, produced by any of the means and in any of the conditions referred to in Articles 321 to 323, with knowledge of that situation, is punishable with a prison sentence of up to one year or a fine of up to 120 days.


Article 330
DISPOSAL OF SEIZED ITEMS
1 The objects manifesting a crime provided for in this code are forfeited in favour of the state, as well as the materials or instruments predominantly used in the practice of that crime, unless the offended holder of the respective right gives its express consent that said objects can once again enter the commercial circuits or that they are given another purpose.
2 Objects declared forfeited, as referred to in the preceding paragraph, are totally or partially destroyed whenever it is not possible to eliminate the part of them or the distinctive sign on them that constitutes violation of the right.


The articles copied above were taken from the English translation made available by the Portuguese Industrial Property Institute, which can be found here.

Petr said...

In the Czech Republic the Act no. 40/2009, the Criminal Code, in section 269 states that intentional infringement of patent (and other specified) rights can result in imprisonment for a period of up to 2 years. In cases of serious infringement the term of imprisonment can be as much as 8 years (damage caused exceeeds 5 mill. CZK, about 200,000EUR)

Petr said...

In Slovakia the Act no. 300/2005, The Criminal Code, in section 282 states that intentional patent infringement can be punished by imprisonment for a period of up to 3 years. This can rise to as much as 8 years if the damage caused exceeded 133,000EUR.

Anonymous said...

In Finland, patent infringement may be a crime punishable by fines (cf Finnish Patent Act of 1967, as amended, Section 57). However, the criminal statute is applicable only to intentional infringement and conditional on the patent holder request for its application.

Candela Estévez said...

According to Article 273 of the Spanish Criminal Code:
1.Whoever, for industrial or commercial purposes, without the consent of the holder of a patent or utility model and being aware of registration thereof, manufactures, imports, possesses, uses, offers or markets objects protected by those rights, shall be punished with a sentence of imprisonment of six months to two years and a fine from twelve to twenty- four months.
2. The same penalties shall be imposed upon whoever, likewise and for the purposes stated, uses or offers the use of a patented procedure, or possesses, offers, markets or uses a product directly obtained by the patented procedure.
Kind regards,
Candela Estévez

Anonymous said...

According to Article 273 of the Spanish Criminal Code:
1.Whoever, for industrial or commercial purposes, without the consent of the holder of a patent or utility model and being aware of registration thereof, manufactures, imports, possesses, uses, offers or markets objects protected by those rights, shall be punished with a sentence of imprisonment of six months to two years and a fine from twelve to twenty- four months.
2. The same penalties shall be imposed upon whoever, likewise and for the purposes stated, uses or offers the use of a patented procedure, or possesses, offers, markets or uses a product directly obtained by the patented procedure.
3. Whoever perpetrates any of the acts described in Section 1 of this Article when equal circumstances concur with regard to objects protected in favour of a third party by an industrial, artistic or topographic model or design of a semiconductor product, shall be punished with the same penalties.
Kind regards,
Candela Estévez

Markus Gaderer said...

Austrian Patent Act, art 159 states:
(1) Anyone who infringes a patent shall be condemned by the court to a fine of up to 360 times the per diem rate. Any person who commits such an act commercially shall be sentenced to detention not exceeding two years.
(2) Likewise the proprietor or manager of an enterprise who fails to prevent the infringement of a patent committed by an employee or agent in the course of the activities of the enterprise shall be sentenced.
(3) If the proprietor of the enterprise pursuant to subsection 2 is a corporation, a collective, an association or another legal entity which is not a physical person, subsection 2 shall apply to the organs if they are guilty of having committed such an omission.
(4) Subsection 1 shall not apply to employees or agents who acted on instruction of their employer or the ordering party if, due to their economic dependency, they cannot be expected to refuse to commit such acts.
(5) Prosecution shall take place only at the request of the infringed party.

Best,
Markus Gaderer

Anonymous said...

Who wants to send people to jail for infringing a patent if it is not even clear whether it is valid?

Until now I thought that the proposed European Patents court was the most inane thing happening in patents for some while - after what I have just learned, I am no longer so sure.

Megan said...

For France -

Article L615-14
1. Any person who has knowingly infringed the rights of the owner of a patent as defined in Articles L613-3 to L613-6 shall be liable to a three-year imprisonment and a fine of € 300,000. Where the offence was committed by an
organised criminal group or an online public communication network or concerning products dangerous to health of humans or animals, the penalties will be increased to a five-year imprisonment and a fine of € 500,000.

Article L615-14-1
In the event of repetition of the offenses defined in Article L615-14 or if the offender is or has been contractually bound to the aggrieved party, the penalties involved shall be doubled.

Japser said...

Interesting point. My question: why would a governement handle crimimal enforcement of patent infringement, trademark infringement and copyright infringement differently?

For copyright, you get protection for free and significant prosecution and enforcement support from the government as available under criminal codes.

For patents, you pay a huge amount of fees and in case of infringement, you will have to take care of prosecution and enforcement yourself. Only support is the court where (a) judge(s) decide(s) in accordance with the law who is right and who is wrong.

Why? Because the economical relevance of copyright is higher than for patents? I wonder...

Hmmm... seems like I have stop here to prevent myself from going off-topic too much.;-)

Louis said...

Brazil, Japan, St Kitts, Thailand: yes, it is a crime.
South Africa: no.

MaxDrei said...

I recall when the law changed, to make wearing a seat belt compulsory, when driving a car. It worked. Everybody buckled up. So legislation as a declaration of what is right and what is wrong can have a socially useful effect.

But does it really deter acts of patent infringement (of duly Government-examined and Government-issued rights) to declare them to be criminal acts? I doubt it.

Do we see any correlation? Is there less patent infringement in those countries where it is a crime. I doubt it.

Anonymous said...

Out of interest - do you get let out of prison if the patent is subsequently revoked in unrelated proceedings? Do they bung you back in again if the revocation is successfully appealed?

Roufousse T. Fairfly said...

Canada:

75. Every person who [... infringes patent rights in some way ... ]

is guilty of an indictable offence and liable to a fine not exceeding two hundred dollars or to imprisonment for a term not exceeding three months or to both.

Roufousse T. Fairfly said...

OOOPS! I looked up the wrong article, which merely addressed false markings. 200$ seemed somewhat lenient, even if you're not a law-and-order freak.

The latter sections are at first glance concerned with false declarations and price fixing.

Section 55 addresses infringement. It apparently does not foresee anything other than [civil] liability for damages sustained by the patentee.

Michaël Beck said...

In Belgium, patent infringement is punishable if it occurs in an economic context, with malice or fraudulent intent (art. 8 act of 15 May 2007 concerning punishment of infringement and piracy of intellectual property rights). The punishment is 3 months to 3 years of imprisonment and/or a fine of 550 EUR to 550.000 EUR.

Dragos M Vilau said...

It is a crime in ROMANIA as well, sanctioned with either imprisonment or a fine.

Anonymous said...

Looks like we may now be able to add the UK to the list:

Surf the channel was on the face of it a case about (contributory) copyright infringement, but if the common-law offence of Conspiracy to defraud applies there, then presumably it could be applied in respect of any type of intellectual property right so long as there was "dishonesty", including patent infringement (either direct or indirect).

Wonder how many corporates we will see in the criminal dock, or is it only individuals who are proprietors of websites who need worry?

Sabine K McNeill said...

What kind of explanation do the IPKats have for the 'uniqueness' of the UK in this situation?

How far back does the history go?

An American IP lawyer told me ages ago that I'm better protected by trade secrets, as patents are the game of the big boys. Hence I withdrew five patents before publication.

And now I discover that patent 'protection' is actually "mis-selling"!!!

Sabine K McNeill said...

I now put a link to this Forum under 'latest news' of SMEIA, the .

Members have formulated requests for change from HM Government.

Sabine K McNeill said...

Thank you to everybody who contributed a country in this discussion! For John Hemming MP wants to do something about it in Parliament.

To know that there are fines or imprisonment in 20 countries while NOTHING deters anybody in the UK is a good beginning for our lobbying efforts on behalf of SMEs.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':