Cannabis Patent Litigation: Treatments for Patent Infringement


Continuing our discussion from final week, we received a couple of stick to-up queries on regardless of whether patent litigation is actually worth the problems and what can be potentially recovered. In quick, the quantity of damages you can recover for patent infringement is outlined by statute. Right here is a cursory discussion of the distinctive varieties of damages that are obtainable in such a case:

Compensatory damages

35 U.S.C.A. § 284 supplies: “Upon acquiring for the claimant the court shall award the claimant damages sufficient to compensate for the infringement but in no occasion much less than a affordable royalty for the use created of the invention by the infringer, with each other with interest and charges as fixed by the court.”

The big, underlying theory of damages in patent litigation is to deny the infringer the fruits of his illegal act, AND to restore to the patent owner the rewards which he would have derived from his monopoly had he not been denied the infringing sales. A further way to believe about this is the distinction amongst “damages” and “profits.” Income refers to what an infringer tends to make. Damages refers to what a patent owner lost by the infringement. A patent owner’s monetary award equals the quantity sufficient to compensate him for the infringement (generally, for the patent owner’s lost earnings), but in no occasion much less than a affordable or established royalty.

Measured by patent owner’s lost earnings

For a patent owner to recover lost earnings, he have to demonstrate that “but for” the infringement, he would have created the sales that the infringer created. To recover beneath the lost earnings strategy, the patent owner have to prove two points:

  • The patent owner would have created the sale of the item but for the infringement (which is an inquiry created primarily based on the demand for the patented item in the marketplace, the patent owner’s potential to meet this demand, and the absence of acceptable substitutes) and
  • Computation on the loss of earnings by suitable proof.

In contrast to copyright or trademark infringement, patent infringement does not offer for an accounting for an infringer’s earnings (except in the case of a style patent). Having said that, the infringer’s earnings may perhaps effectively be regarded as, for comparison purposes with the patent owner’s proof of his lost earnings, in estimating the patent owner’s damages.

Lost earnings may perhaps be in the kind of diverted sales, eroded rates, or enhanced expenditures. It really should be noted that an infringer’s foreign sales are not incorporated in this calculation mainly because protection only extends to infringement in the United States.

Measured by a affordable royalty

In the occasion a patent owner can’t prove the above, his damages are restricted to a “reasonable royalty.” A affordable royalty is frequently the quantity at which a individual desiring to manufacture and sell a patented item would be prepared to spend as a royalty to the patent owner. The aspects regarded as in this evaluation are referred to as the Georgia-Pacific aspects (from Georgia-Pacific Corp v. United States Plywood Corp.):

  • The royalties received by the patent owner for the licensing of the topic patent.
  • The prices paid by the licensee for the use of other patents comparable to the topic patent.
  • The nature and scope of the license, as exclusive or non-exclusive.
  • The licensor’s established policy and advertising plan to keep his patent monopoly by not licensing other individuals to use the invention or by granting licenses beneath particular situations made to preserve that monopoly.
  • The industrial partnership amongst the licensor and licensee.
  • The impact of promoting the patented specialty in advertising sales of other merchandise of the licensee the current worth of the invention to the licensor as a generator of sales of his non-patented products and the extent of such derivative or convoyed sales.
  • The duration of the patent and the term of the license.
  • The established profitability of the item created beneath the patent its industrial achievement and its present reputation.
  • The utility and benefits of the patent home more than the old modes or devices, if any, that had been utilized for functioning out equivalent final results.
  • The nature of the patented invention the character of the industrial embodiment of it as owned and created by the licensor and the rewards to these who have utilized the invention.
  • The extent to which the infringer has created use of the invention and any proof probative of the worth of that use.
  • The portion of the profit or of the promoting cost that may perhaps be customary in the certain small business or in comparable firms to let for the use of the invention or analogous inventions.
  • The portion of the realizable profit that really should be credited to the invention as distinguished from non-patented components, the manufacturing course of action, small business dangers, or important characteristics or improvements added by the infringer.
  • The opinion testimony of certified professionals.
  • The quantity that a licensor (such as the patent owner) and a licensee (such as the infringer) would have agreed upon (at the time the infringement started) if each had been reasonably and voluntarily attempting to attain an agreement.

Indirect damages

Commonly, indirect or consequential damages (such as lost provide sales) are not recoverable.

Interest on damages award

35 U.S.C.A. § 284 supplies as follows relating to interest: “Upon acquiring for the claimant the court shall award the claimant damages … with each other with interest and charges as fixed by the court.”

Each pre-judgment and post-judgment interest are incorporated.

Exemplary (or, punitive) damages

35 U.S.C.A. § 284 supplies as follows relating to exemplary damages: “When the damages are not identified by a jury, the court shall assess them. In either occasion, the court may perhaps boost the damages up to 3 instances the quantity identified or assessed.”

A patent owner can win exemplary damages, up to and like 3 instances the actual damages, exactly where the infringer has knowingly, deliberately, intentionally, willfully, or wantonly infringed the patent. When “willful infringement” is a nebulous reality inquiry, the key query is regardless of whether the infringer, acting in fantastic faith, had cause to think that it had the correct to act in the infringing manner. The In re Seagate Technologies test is comprised of two components:

  • Did the infringer act in spite of an objectively higher likelihood that his actions would constitute infringement of a valid patent? (Note, the infringer’s actual state of thoughts is irrelevant).
  • Was this threat either recognized or so apparent that it should’ve been recognized to the infringer?


Latest posts