A guide to the UPC and the UP - Flipbook - Page 291
15-48 There will also be sales made by the infringer that the patentee would not have made for
various reasons. For these the damages to be paid to the patentee could assessed on the basis
of the profit made from such sales by the infringer or it might be appropriate that the patentee
is awarded damages based on a notional reasonable royalty for such sales.
Alternative Method
15-49 A secondary, alternative method for calculating damages is a licence analogy method, i.e. the
damages are set “in appropriate cases, as a lump sum on the basis of elements such as, at least,
the amount of the royalties or fees which would have been due if the infringer had requested
authorisation to use the patent in question.” 66 This might be an appropriate method for
situations where the patentee already grants licences under the patent and therefore it is
relatively easy to set the royalty rate. 67
15-50 Although this method of calculation appears to be limited to the amount of a lost royalty, the
CJEU has held that a rights holder can, in relation to the equivalent provision in the Enforcement
Directive, claim compensation for moral prejudice since the words “at least” allow other
elements to be included in the claim to damages. In doing so, the CJEU stated: 68
“it should be pointed out that, where an intellectual property right has been infringed, mere
payment of the hypothetical royalty is not capable of guaranteeing compensation in respect of
all the loss actually suffered, given that payment of that royalty would not, in itself, ensure
reimbursement of any costs – referred to in recital 26 of Directive 2004/48 69 – that are linked to
researching and identifying possible acts of infringement, compensation for possible moral
prejudice … or payment of interest on the sums due.”
15-51 In that case, the damages under art.13(1)(b) Enforcement Directive (which only lays down
minimum standards), did not deprive the right’s owner from claiming damages calculated
on the basis of twice a hypothetical royalty as required by Polish law. 70
Causation
15-52 There must be a causal link between the harm for which damages are payable and the
infringement. 71 The requirement for causation is a common feature of tort law in Contracting
Member States and although art.13(1) Enforcement Directive contains a similar requirement,
there is no harmonised rule concerning the appropriate causation test and its operation in
actions for damages for patent infringement. However, in relation to the alternative method
of calculating damages (albeit in the context of copyright infringement), the CJEU has
already stated that an excessively strict argument based on causality should not be applied
if it deprived a right owner from claiming damages calculated on the basis of twice a
hypothetical royalty. 72 In particular, the CJEU stated that:
66
67
68
69
70
71
72
art.68(3)(b) UPCA.
See 2nd sentence of recital 26 Enforcement Directive which states “As an alternative, for example where it would be difficult to
determine the amount of actual prejudice suffered, the amount of damages might be derived from elements such as the
royalties or fees which would have been due if the infringer had requested authorisation to use the intellectual property right
in question”. It is to be expected however that a royalty for a licence under a right which has been held to be valid and
infringed would be expected to be substantially higher than that established in most negotiated licences and where the right
has not yet been held to be valid and infringed, as recognised by the German courts in awarding such damages.
Stowarzyszenie ‘Olawska Telewizja Kablowa’ v Stowarzyszenie Filowców Polskich (C-367/15) ECLI:EU:C:2017:36 at [30] referring to
Christian Liffers v Producciones Mandarina SL (C-99/15) ECLI:EU:C:2016:173 at [26].
See 3rd sentence of recital 26 Enforcement Directive which states “The aim is not to introduce an obligation to provide for
punitive damages but to allow for compensation based on an objective criterion while taking account of the expenses
incurred by the rightholder, such as the costs of identification and research”.
art.79(3)(b) of the Polish Law on Copyright and Related Rights.
art.68(1) UPCA.
See paragraph 15-51.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 281
