From: Delvin Carnegie [Delvin.Carnegie@patent.gov.uk]
Sent: 24 April 2003 13:33

This notice is to make you aware of the EU Commission's proposal for a Directive on the enforcement of intellectual property rights. We also invite you to let us know if you are interested in this proposal and send us any comments you have at this stage. What's this about and why does it matter?

2. On 30th January 2003 the EU Commission announced its proposed Directive on the enforcement of intellectual property rights (http://europa.eu.int/comm/internal_market/en/indprop/piracy/index.htm). It is part of a broad-based approach by the Commission to tackle counterfeiting and piracy.

3. The proposal covers infringement of all intellectual property rights (ipr) (both copyright and industrial property, such as trade marks, patents and designs) deriving from Community and European law. It concentrates on infringements carried out for commercial purposes or which cause significant harm to rights holders. It aims to build on Member States' international obligations and notably the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

4. The proposals in the Directive draw on best practice in the Member States and include:

General provisions (Articles 3-6) - provision of proportionate measures and procedures to enforce ipr so that infringements are punishable by penalties, recognition of rights management or professional defence bodies as entitled to apply for enforcement measures on behalf of rights holders and presumptions for copyright.

Evidence (Articles 7-8) - measures to enable judicial authorities to order the communication or seizure of bank, financial or commercial documents together with supporting evidence protection measures.

Right of information (Articles 9) -  provisions of a right of information regarding the origin of goods or services that are thought to infringe an ipr.

Provisional and precautionary measures (Articles 10-11) - make available provisional measures, such as injunctions, to prevent the infringement of ipr based on reasonable evidence from the applicant. These to include, in appropriate cases, injunctions to freeze the assets of the alleged infringing party.

Measures resulting from a decision on the merits of the case (Articles 12-16) - without prejudice to the damages due from an ipr infringement, the judicial authorities may order various measures such as the recall of infringing goods, their disposal or destruction and preventive measures.

Damages and legal costs (Articles 17-18) - judicial authorities shall order an infringer to pay the right holder adequate damages in reparation for an ipr infringement. These damages set at double the royalties or fees if the infringer had been an authorised user of the ipr, or compensatory damages corresponding to the actual loss with the legal costs borne by the offending party.

Publicity measures (Article 19) - the judicial authorities may order, at the request of the right holder that a judicial decision is published at the expense of the infringer.

Criminal law provisions (Article 20) - serious infringements of ipr should be treated at criminal offences and appropriate criminal sanctions including imprisonment should be provided.

Technical measures (Articles 21-22) - without prejudice to particular provisions applicable to copyright, related rights and sui generis right of the creator of a database, appropriate legal protection should be provided against the manufacture, import, distribution and use of illegal technical devices. Codes of conduct aimed at the enforcement of ipr shall be encouraged.

Administrative cooperation (Articles 23-24) - three years after its implementation, there shall be an assessment of the effectiveness of the Directive and national correspondents shall be designated to encourage co-operation and communication.

Timetable

5. The proposal will be considered under the "co-decision procedure" that is by the Council of Ministers, acting by a qualified majority after obtaining an opinion from the European Parliament. The Competitiveness Council will deal with this proposal. As yet the timetable is not clear, but we think it unlikely that the Competitiveness Council will have its first discussion of the proposal during the Greek Presidency (ie. before end June 2003).

Getting in touch

6. We intend to keep interested parties informed of progress from time to time, so, if you are interested in this draft Directive, it would be helpful if you could let us know and preferably provide us with an email address. If you have any comments on the Commission's proposals at this stage, we would also like to hear from you as soon as possible. Depending on interest, we may arrange an open meeting/meetings to discuss the proposal. If you are interested in attending such a meeting, please let us know.

7. Please send your expressions of interest and comments by email, fax or letter to:

Jeff Watson
The Patent Office
Concept House
Cardiff Road
Newport
NP10 8QQ

Tel:+44(0)1633 813650
Fax:+44(0)1633 814922
Email: jeff.watson@patent.gov.uk

Please note that any comments you provide may be made available to the public unless you indicate when responding that they should be treated in confidence.