Damages calculation in patent infringement-perspectives of patent reforms in the United States, China and Taiwan

• Main Authors: Lee, Po Ching, 李柏靜
• Other Authors: Fong, Jerry G.
• Format: Others
• Language: zh-TW
• Published: 2009
• Online Access: http://ndltd.ncl.edu.tw/handle/65888748640984635310

碩士 === 國立政治大學 === 法律科際整合研究所 === 97 === For modernization of patent laws, the United States, China and Taiwan are undergoing patent reform, each amending its damages provision. This thesis categorized forms of damages calculation in three countries, and tried to analyze its amendment from the perspective of patent reform in each country. This thesis analyzed the possible impact of specifying the apportionment rule and entire market value rule in Section 284, 35 United State Code. In addition, three standards of willful infringement with enhanced damages were concluded. First, the traditional willfulness doctrine in Underwater Devices case is the affirmative duty of due care which sets a lower threshold of willing infringement that is more akin to negligence. Second, willfulness in Seagate case requires at least an objective recklessness. Third, willfulness in Patent Reform Act of 2009 requires an objective recklessness in three different conditions; such proposal may restrict the discretion of the court. With national intellectual property strategy to improve the domestic capacity of innovation and to build an innovative country, the third amendment to Patent Act of the People's Republic of China becomes in effect in 2009. Article 65 in the new Chinese Patent Act codifies the statutory damages in the range of RMB 10,000 to 1,000,000, compared to the current range of RMB 5,000 to 500,000 provided by the Supreme People’s Court judicial interpretation. In the perspective of litigation costs, statutory damages award may be a more economic approach but subjective judgment could have implication caused by lack of factual evidence for damages calculation. Article 65 also codifies that the amount of compensation shall include reasonable cost for ceasing patent infringement by the right holder, however, how to measure the reasonable cost is not clear. Although the new Chinese Patent Act does not include punitive damages, the maximum statutory damages, other related civil liability and administrative penalty are increased. Such amendments may increase the pecuniary burden of the infringer and expect to lead to more deterrent effect on patent infringement and encourage innovation. In the context of international regulation change, national technology policy change and establishment of professional Intellectual Property Court, comprehensive review of Taiwanese Patent Act is ongoing. The proposed bill adds “equivalent amount of royalty for implementing the patent invention as damages” into Article 85 of current Taiwanese Patent Act. However, it is not clearly codified that a reasonable royalty must be justified and such royalty calculation is to set a floor for damages award. The proposed bill abandons punitive damages for willful infringement. In such proposal, the result of willful infringement may not be a substantial additional risk but only a cost of doing business, because the litigation cost and damages award are not so high, and there is no attorney fee award or criminal penalty in Taiwanese patent regulation system. Hence, reconsideration of retaining punitive damages is suggested.