Presumption of Patentee’s Damages by Infringer’s Profits
(Conclusion) Patentee’s working of a patented invention is not required to presume patentee’s damages by infringer’s profits under Article 102, paragraph (2) of the Patent Act, and the application thereof should be allowed when there are any circumstances suggesting that the patentee could have gained profits if no patent infringement had been made by the infringer.
Taking into account that Article 102, paragraph (2) of the Patent Act was provided for reducing the difficulty in proving the amount of patentee’s damage and that the effect thereof is merely presumptive, there are no reasonable grounds for making the requirements for the application thereof particularly strict. Thus, it should be construed that the application thereof should be allowed when there are any circumstances suggesting that the patentee could have gained profits if no patent infringement had been made by the infringer. Moreover, it would be reasonable to construe that various circumstances such as the difference between the patentee and the infringer in terms of the manner of business shall be taken into consideration as the circumstances to reduce the presumed amount of patentee’s damage. Furthermore, it would be reasonable to construe that the application of the Article 102, paragraph (2) of the Patent Act does not require the patentee to work the patented invention.
<Writer: Kei IIDA (Attorney-at-law and Patent Attorney)>
https://www.ip.courts.go.jp/app/files/hanrei_en/730/000730.pdf