An International Guide to
Patent Case Management for Judges

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1.3.11 Remedies

Turning to the final stage of patent proceedings, the typical remedies for patent infringement include: a final injunction restraining the defendant from infringing the patent; damages in respect of the infringement; an account of the profits derived from the infringement; an order for the infringer to deliver up or destroy any patent infringing products; publication of the decision; and revocation of the patent or a declaration that the patent is valid. Each jurisdiction may give priority to different forms of remedies: some may prioritize injunctive relief, while others may place more significance on monetary damages.

In all jurisdictions in this Guide, patentees may seek a permanent injunction as a final remedy. There are varying approaches as to the discretion of the court in ordering injunctions. Some jurisdictions will grant a permanent injunction automatically following a finding of infringement and validity in favor of the patentee, without weighing the interests of the parties or affected third parties. In these jurisdictions, only in very exceptional circumstances will a claim for injunctive relief be denied for disproportionality.61 In other jurisdictions, courts retain broad discretion to deny injunctions, and the threshold for obtaining injunctive relief is higher.62 Generally speaking, an injunction is only available as long as the patent is in force.63 However, in some cases, the courts may grant an injunction that extends beyond the lifetime of a patent in order to prevent the defendant from continuing to benefit from the infringement established during the patent’s lifetime.64

It is common practice to award compensatory damages. In many jurisdictions,65 courts adopt a two-stage process separating the questions of liability from the amount of relief, so that the court first determines liability and thereafter considers the calculation of monetary damages in follow-up proceedings.

The methods for damage calculation include: the patentee’s lost sales or profits resulting from the infringement; profit made by the infringer as a result of the infringement; or a reasonable royalty rate, estimated as the amount a licensee would pay for the rights to the invention.66 In some jurisdictions, where there is insufficient evidence to prove the facts necessary to establish the amount of damages under the three aforementioned methods, courts can exercise discretion to calculate the amount based on the overall arguments and the evidence provided67 or rely on statutory compensation rates.68

Some, but not all, jurisdictions provide for enhanced damages in civil patent actions, also referred to as “punitive” or “exemplary” damages or “additional damages.”69 The amounts typically range between three times the amount of compensatory damage up to five times the damage caused. Enhanced damages may be awarded in cases of flagrant, intentional and serious infringement, to deter similar future infringements. Among jurisdictions that provide for enhanced damages, there is varying practice. Courts in some jurisdictions frequently order enhanced damages, while in others, although they are provided for by law, they are rarely used, if at all.

Some jurisdictions also provide for an account of profits, requiring an infringer to account for and disgorge the profits it made through the infringing conduct. In these jurisdictions, the patentee has the choice of seeking financial compensation by way of either damages or an account of profits, but not both.70

In addition to injunctive relief and damages, there are other remedies available to patent litigants, such as recall, removal, destruction or delivery up of patent infringing products.71 These may be ordered in addition to an injunction in cases of direct infringement, but typically not for indirect infringement. The infringing goods need to be in the territory of the court’s jurisdiction. In some jurisdictions, the claim for destruction is available even when the patent has expired during the course of litigation, since the infringer must not benefit from infringing acts committed in the past. The duty to destroy may also be fulfilled by design-arounds to avoid the use of the patent.

Another remedy available in some jurisdictions is the publication of the court decision by placing advertisements in newspapers or any other periodical publication, intended to reinstate the plaintiff’s goodwill or reputation.72

Finally, disputes challenging a patent’s validity may result in an order for the revocation of the patent, or a certificate of contested validity when the challenge is unsuccessful.73