New Law: Criminal Penalties for Violators of IP Law

At the end of June 2003, the Legislative period ended with the approval in Third Debate of a Bill whereby Articles 382, 383, 384 and 389, contained in the Chapter IV to be titled "Crimes against Industrial Property Rights" of the Criminal Code of the Republic of Panama are to be modified.

This initiative to amend the Criminal Code goes in hand with the modernization the Republic of Panama has set forth for the regulation and registration of Industrial and Intellectual Property Rights in the country. A Committee is presently studying possible amendments to Law No. 35 of May 10, 1996, whereby Industrial Property rights are regulated.

The aforementioned Bill provides for multiple changes to Chapter IV of Title XII of the Criminal Code currently in force in the Republic of Panama. The main changes are the following:

1. The present title of Chapter IV of Title XII of the Criminal Code "Crimes Against the Rights of Others" will be changed to "Crimes against Industrial Property Rights".

2. The penalties for violators of the industrial property rights of third parties will be subject to severer punishments. For example, article 382 previously stated that infringers could be convicted with a sentence of 6 months up to 1 year. The amendment to article 382 provides a conviction of 2 to 4 years in prison.

3. Also, more activities are considered punishable.

Article 382, for example, formerly stated that the person that without authorization of the title holder of a patent, manufacture, import or sell a product protected by a patent or uses it without permission to use the patented process, will be punished with imprisonment of 6 months to a year, or to a 20 to 150 day-fine.

The proposed Article 382 considers that the persons who manufacture or assemble a product or object protected by a patent of invention or a utility model, without the license registered before the Directorate of Intellectual Property of the Ministry of Commerce and Industry, or commercialize or provide for circulation of a product or object in such a manner manufactured or ensambled, will be punished with imprisonment of 2 to 4 years. This same punishment will be applied to whomever uses the patented process, without the registered license.

Article 384 provides that in the event that the conducts described in articles 382, 382-A, 382-B, 382-C, 382-D, 382-E, 382-F affect public health the violators will be punished with a prison term of 30 months to 6 years. As an exception, article 384-A sets forth that if the infringer is a traveling salesman or a stand seller, with or without the authorization of the corresponding authority for the undertaking of such actitivity, he will be subject one sixth of the punishment of prison herein detailed. If this activity puts in danger public health, punishment will be of prison of 1 to 2 years.

4. New considerations are provided with the proposed bill, with the incorporation of new articles. These articles provide correlation between the Industrial Property Rights law and the Criminal Code. This is extremely important because all protected rights are contemplated and a punishment is set for the infringers thereof.

Article 382-A is added to the Criminal Code. This article provides that the person that reproduces, modifies or imitates a protected model or industrial design, will be punished with 2 to 4 years in prison. This conviction will also be imposed to the person that manufactures or ensambles a product or object resulting from a model or industrial design, without the registered license, or commercializes it or provides the circulation of the product or object in this way manufactured or ensemble.

Article 382-B is also added to the Criminal Code. This article provides that the person that falsifies alters or imitates a trademark, commercial name or expression or advertising sign, will be punished with prison of 2 to 4 years. This same consequence will be applicable to the person that commercializes or provides for the circulation of a fake, altered or imitated trademark.

Article 382-C establishes that the person that manufactures, commercializes or provides for the circulation of products or offers or provides services, that have an indication of their proceeding or a denomination of origin, that is in violation of industrial property rights, will be subject to a prison term of 1 to 2 years.

Article 382-D provides that the person who reveals an industrial or commercial secret, without justified cause, with the purpose of obtaining an economic benefit for himself or for a third party with the purpose of causing damage to the person that holds the secret or to his authorized dealer; will be subject ot prison of 1 to 3 years.

Article 382-E is aimed to punish the person that obtains or uses information contained in an industrial or commercial secret, without the authorization of the person that keeps the same or his authorized dealer, with the purpose of obtaining an economic benefit for himself or for a third party, or with the intention of causing a damage to the person keeping the secret or his authorized dealer. This person can be subject to prison of 2 to 4 years.

Article 382-F is set out to protect protected vegetable varieties. The person that commercialize or provide for the circulation of a protected vegetable variety, that can be used as reproduction material or of multiplication, without the respective license registered before the Directorate of Industrial Property of the Ministry of Commerce and Industry, will be punished with prison of 2 to 4 years.

Article 389 will provide severer penalty for the persons who collaborate with the hiding or covering of the unlawful act or helps evade the juridical consequences of acts against intellectual property rights in general, among other activities, with prison of 5 to 12 years and a fine of 100 to 200 days. This punishment is to be considered severe as the longer prison fine set in the Criminal Code is 20 years for homicide.

5. Consequences for public servants are increased, as well as the activities considered as violations:

Article 383 presently in force provides that the public servant that use, in benefit of himself or others, inventions or scientific discoveries or new industrial applications that he knows due to his post, that are to remain secret, will be subject to prison of 1 to 3 years and a fine of 50 to 200 days.

The proposed Article 383 states that the public servant that use or make known, in benefit of himself or others, information or documentation, concerning any industrial property right, that he has knowledge of due to his post, that must remain secret, will be subject to prison of 2 to 4 years and with a fine of 200 to 365 days.

6. The proposed bill also provides for modifications to the Judicial Procedure Code, in order to harmonize the provisions of this Code and the Criminal Code. For example, numeral 13 of article 159 of the Judicial Procedure Code is to be amended to set cases of infringement of industrial property rights under the jurisdiction of Circuit Courts, due to the increase of the punishment. Circuit Courts only consider conducts punishable with a minimum sentence of 2 years. The hierarchy of the court to decide on the matters has been elevated.

7. Bail for crimes against copyright and connected rights have been set at a minimum of five thousand dollars (US$5,000.00), as will be added to Article 2159 of the Judicial Procedure Code.

8. Fines set forth in Law 35 of May 10, 1996 have been increased and issues contemplated for the modification of the Criminal Law have also been included in the range of the fines to be imposed administratively by the General Directorate of Industrial Property of the Ministry of Commerce and Industry. This modification is to parallel the increased severity to the held is this proposed bill is passed. Fines will range from US$10,000.00 for violators, and those who aid and cover them, up to US$500,000.00 if public health is compromised. These penalties can be imposed both by Civil and Criminal Judges.

9. This Bill was approved in third debate by the Legislative Assembly before ending the first legislative period of this year. It sets forth many important aspects that will definitely have a positive impact and result in strengthening the system for enforcement of IP rights in Panama. The Bill is presently awaiting ratification from the President to become law of the country.

10. Pardini & Asociados has a complete IP Law team, prepared to assist in the protection and defense of IP rights in the Republic of Panama and the Central American region.