PA 62 – Restrictions of recovery of damages for infringement Flashcards
What does S62 concern
Restrictions on Recovery of Damages
When are damages / accounts of profit not awarded against a defendant in an infringement action
S62(1)
They are NOT awarded against a defendant who can prove they were unaware and had no reasonable grounds to suppose that the patent existed and was in force at the time of the infringement.
What does application of the word “patented” or similar mean for an infringer
S62(1)
Mere application of the word “patented” or similar to a product is NOT enough to confer awareness, unless in conjunction with the patent number or web link.
Can damages be awarded for infringement in the renewal grace period
S62(2)
They can, but they are DISCRETIONARY
What is taken into account for an infringed patent where an amendment has been allowed for calculation of damages
S62(3)
When any amendment of the patent has been allowed:
a) at the date of infringement, whether the defendant knew or had reasonable grounds to know that he was infringing
b) whether the patent as published was prepared in good faith and with reasonable skill and knowledge (i.e. didn’t ignore the art when drafted)
c) whether the current proceedings are brought in good faith
What is the innocent infringement test
The test of S62(1)
you are unaware of the patent, not unaware of infringing the patent
Why should you amend your patent to make is valid ASAP
Because a partially invalid patent will mean less in terms of damages.
It is preferable to amend under S27 or Art 105aEPC, rather than S75 as there is more freedom
How does the burden of proof vary for different possible innocent infringers
A big company will have a higher burden of proof as there is a larger expectation that they would have performed an FTO search
SMEs and individuals have a better chance of demonstrating innocence
How does a licence of right limit damages
Under S46(3)(c) the existence of a licence of right limits DAMAGES to TWO TIMES the retrospective licence fees
When are damages for infringing not awarded, and what are the exceptions
If the infringed patent was invalid prior to amendment, unless the court/Comptroller is satisfied that the claim was originally filed in good faith, and the infringement fell in the scope of both the invalid claim, and the claim as amended
When are damages not applicable for infringement
If the infringement had a valid defence under
S60(5) (infringement exceptions)
S64 (Prior Use)
S72 (the patent has been revoked)
When are damages or costs for infringement increased
- If there is an existing certificate of contested validity (costs at indemnity if someone subsequently re-contested the validity and lost under S65(2))
- damages can include revenue for service charges, peripherals and the costs of losing bargaining power as a business etc
Why should you consider sending a potential infringer a copy of the patent or application
As they then will not have an innocence defence, and full damages can be awarded.
