Special Issue: International Patent Enforcement

This year (2015), I completed my 100th intellectual property (IP) rights agreement for UC Berkeley (UCB). My most recent agreement is an exclusive license to a UCB spinout for three sensor-related technologies. That agreement was completed in about 30 days. About half of my UCB agreements were with startups; and the technologies that I’ve licensed include battery technologies, biofuels, medical devices, nano materials, photovoltaics, sensors, semiconductors, software, and biomimetic technologies.

I. Available Reliefs A patent owner may be able to obtain monetary damages 1 (primarily calculated as a reasonable royalty or lost profits), prejudgment and post-judgment interest, certain costs,2 and injunctive relief. A reasonable royalty is calculated based upon the application of a set of factors first set forth in Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970). If the court finds that the case is exceptional, the court may award enhanced damages up to three times the amount of damages proven 3 and attorneys’ fees.4 Entry of injunctive relief is not automatic, but requires that the patent owner prove that it has suffered irreparable harm, that money damages cannot compensate it for the injury, that the balance of hardships favors entry of an injunction, and that the public interest does not weigh against entry of an injunction.5 As set forth in greater detail below, a patent owner may also obtain a preliminary injunction early in the case proceedings to prevent infringement while the case is moving forward.

I. Available ReliefsUnder German law, the following main reliefs against the infringer are generally available:• A cease and desist claim.• A compensatory damages claim (no punitive damages are available; the claimant may choose from three different methods for calculating damages, namely own lost profits, infringer’s profit or reasonably royalty).• A claim for information about, inter alia, the origin and the distribution channels of the infringing products, the names and addresses of the manufacturers, suppliers or other previous owners, the commercial customers and the quantity of the products manufactured or supplied).• A claim for rendering of accounts regarding the revenue and expenditures caused by the infringing activities, including a detailed statement of the profit earned.• A destruction claim for the infringing products which are in the possession or ownership of the infringer. • A recall/removal claim for the infringing products from the distribution channels.

I. Available ReliefsFrench law offers various reliefs aiming to restore the patent holder’s monopoly and to compensate the claimant.• Restoration of Monopoly If infringement is found or admitted, then the judge will prohibit the infringer from pursuing the infringing actions. The sanction is often made enforceable by a court, on a provisional basis, which allows the sanction to be enforced regardless the filling of an appeal.The judge may also make an order for the infringing products to be recalled or withdrawn from the market, destroyed or confiscated in favor of the patent owner. The judge may finally order, at the request of the applicant and at the expense of the infringer, appropriate measures for the dissemination of the decision (e.g. publication online or in newspaper) (article L. 615-7-1 of the French intellectual property Code).• Damages The damages granted to the patent owner would take into consideration the negative economic consequences of the infringement (including the lost of profits), the moral prejudice and the infringer’s unfair profits. Alternatively, the indemnification may equal a lump sum superior to the royalties that the infringer would have payed should he have been allowed to use the patent (article L. 615-7 of the French intellectual property Code).There are no punitive damages in France.

In the Netherlands, the following forms of relief are available to patentees in an enforcement action:• Injunctions (also cross-border as preliminary relief) ordering the defendant to cease and desist from (direct and/or indirect) infringement;• A declaration that the defendant and/or the defendant’s product infringes the patent• Recall orders; • Orders for surrendering and/or destruction of infringing goods;• Orders for providing information concerning suppliers and/or customers;• Orders to pay damages or to surrender the profits made through the infringement;• Orders for accounting for profits made through the infringement;• An order forcing the infringing party to publish the court’s decision;• Orders to compensate the (full) costs of the litigation (including lawyers’ fees, and costs of European Patent Attorneys and experts).

I. Available ReliefThe courts have a number of reliefs available to remedy patent infringement. These are: • Injunctions to restrain further patent infringement. A finding of actual infringement is normally considered by the court to be enough to evidence a threat of further infringement. • Damages. The court may also award interest on damages. Damages are awarded so as to put the patentee in the position they would have been in but for the infringement, so long as the loss that is alleged was foreseeable and caused by the infringement. • An account of profits, as an alternative to damages. The successful claimant may choose between damages or an account of profits. • An order for delivery up or destruction of the infringing articles. The claimant may choose between these remedies. • An order for the circulation or dissemination of the court’s judgment. This is done at the expense of the unsuccessful party.

I. Available ReliefsPatent enforcement in Italy benefits from a wide choice of available relief, both within preliminary proceedings and on the merits.Preliminary relief includes:• Judicial description • Preliminary Injunction• Withdrawal from the market• Penalty for non-compliance• Seizure• Precautionary seizure, including blocking of bank accounts• Right of information • Publication of the decisionRelief available on the merits includes:• Permanent injunction• Definitive removal from the market• Penalty for non-compliance• Destruction • Right of information • Damages and reversion of profits• Publication of the decision

I. Available ReliefsEntitlement The right to a patent belongs to the inventor or to his successors in title and is transferable by any of the means set up by the law. Employee inventions belong to the employer, with the exception of those inventions whose subject matter is not explicit or implicitly connected to the subject-matter of the employment contract. If a patent has been granted to a legal or natural person not entitled to obtain it, the legitimate owner may bring an action claiming the entitlement to the patent and its recordal on the Spanish Patent and Trademarks Office (“SPTO”), subject to a statutory limitation of two years as of the date or publication of the grant.

Available ReliefsThe injunction and monetary damages are the two main available reliefs in China. The injunctive relief is to stop potential future infringement, and monetary damages are to compensate the damage from the past infringement. • InjunctionIf a judgment of infringement is found by the court, the permanent injunction is available almost by default as a civil remedy. However, some very rare exceptions may exist under Article 26 of 2016 Supreme Court’s Judicial Interpretation. For example, if there is a consideration of national and public interest, the court may not grant a permanent injunction, but it may request the infringer to pay corresponding costs similar to a grant of compulsory license. The enforcement of permanent injunction judgment is against the defendants on their infringing acts only.• Monetary damagesMonetary damages are common civil remedies used by the court. According to Article 65 of the Patent Law, the amount of compensation for patent infringement shall be determined according to the actual losses suffered by the claimant, or the gains derived by the infringer from the infringement, or a multiple of the royalties of such patent. If it is difficult to determine the above amount, the court may determine at its discretion a compensation amount ranging from RMB10,000 to RMB one million as statutory damage. The monetary remedies should also take into account the reasonable expenses in the course of stopping the infringement.

Available ReliefsInjunctive relief and monetary compensation for damages are available. If the court finds that the alleged infringer is actually infringing a valid patent or that there is a threat of infringement through the proceeding for litigation on the merits, the court orders an injunctive relief upon patentee’s request without examining other conditions such as public policy or the necessity for such an injunction except for cases of standard essential patents for which a FRAND declaration was made. Compensation for damages is limited to the actual damages caused by the act of infringement taking place after the patent was granted. Punitive damages are not awarded. A patentee may rely on one of the following three methods for quantifying damages: (1) [quantity of articles sold by the infringer] × [marginal profit per unit of competitive products which would have been sold by the injured party]; (2) marginal profits gained by the infringer through the act of infringement; and (3) the amount equivalent to a reasonable royalty.

I. Available ReliefA number of options are available to a patentee or an exclusive licensee who has been recorded as such with Korean Intellectual Property Office (“KIPO”) through a civil main action. Generally, injunctions against infringement and monetary damages are available for patent infringement actions. In addition, one can demand the destruction of the means by which the infringement have been committed, including the products obtained through use of infringing process, the removal of the facilities used for infringement and other measures necessary to prevent infringement. Additionally, a preliminary injunction action can be filed as a separate action from the civil main action. A criminal action may be sought for infringement of technical IP rights, including patents, utility models, and designs, but in reality, criminal prosecution is almost never used.

I. Available ReliefsThe starting point is the Singapore Patents Act. The common reliefs available are invalidation and revocation proceedings before the Intellectual Property Office of Singapore (“IPOS”). Only upon an agreement by the parties involved can the matter of infringement be brought before IPOS. Relief(s) for Proprietor or the PatentThe reliefs that may be granted by the High Court of Singapore (as court of first instance) would include (a) an injunction to restrain the infringer from any apprehended act of infringement; (b) an order for delivery up or destruction of any patented product in relation to which there is infringement or any article in which the patented product is inextricably comprised or any material and implement for the predominant use for the creation of the infringing product; (c) an award of damages; (d) an order for an account of the profits derived from the infringement; and (e) a declaration that the patent is valid and has been infringed. Do note that the award of damages and order for an account of the profits derived from the infringement are mutually exclusive.Relief(s) for Alleged InfringerAn alleged infringer may avail himself to the relief of groundless threats of infringement if it is shown that either the patent is invalid in a relevant aspect or the patent is not infringed.

This chapter addresses patent arbitration under the rules provided by the International Chamber of Commerce (“ICC”). The ICC rules are fairly sparse and allow for a great deal of flexibility, either in a contract containing an arbitration clause or in the conduct of the arbitral proceedings themselves. Despite the potential for flexibility, in practice there are a handful of authoritative treatises and several norms and customs governing ICC arbitration.

The number of international patent applications filed through the World Intellectual Property Organization (WIPO)2 continues to hit record numbers. According to the World Intellectual Property Indicators 2017, there was a worldwide growth of 8.3 percent in 2016 in number of patent applications, with China taking the lead (accounting for 42.8 percent of the total patent applications), followed by the United States (19.4 percent) and Japan (10.2 percent). As a product of a market in constant evolution and activity, the multiplication of international intellectual property transactions is a phenomenon that deserves to be further investigated.

I. Ability to Sue and be Sued 1. Suing for infringing products on U.S.-Flagged Ships where infringer has no contacts.II. Damages 2. Creating liability for accused infringer’s attorney fees and costs because of prosecution and litigation misconduct in courts and the PTO.III. Settlements 3. Settling trade dress claims while retaining liability for design patent infringement on the same product. IV. Scope Of License 4. Defining whether a license to existing patents extends to later-filed continuation and divisional patents. V. Clarifying Provisions 5. Using clarifying provisions to avoid ambiguity in a patent license agreement.