A guide to the UPC and the UP - Flipbook - Page 292
“… the argument [that the injured party could not calculate the damages on the basis of twice
the amount of the hypothetical royalty because in doing so there was no needed to prove the
causal link between the event giving rise to the copyright infringement and the loss suffered]
is based on an excessively strict interpretation of the concept of ‘causality’, under which the
holder of the infringed right should establish a causal link between that event and not only
the loss suffered but also its precise amount. Such an interpretation is irreconcilable with the
very idea of setting damages as a lump sum and, therefore, with Article 13(1)(b)
[Enforcement Directive], which permits that type of compensation.”
15-53 The Court will have to decide on the test to use, but a strict “but for” test may make it
particularly difficult for a claimant to show the necessary causal link between patent
infringement and the infringer’s unfair profits; the infringer may be able to break the causal link
by showing that its profits were generated for reasons unconnected with the infringement.
A recent decision from the UK Court of Appeal has also highlighted the need for a successful
patentee to establish not only factual but also legal causation in order to recover damages. 73
Defendant’s Knowledge
15-54 Arts 68(1) and 68(4) UPCA provide for a difference in approach to the award of damages
depending on whether or not the infringer knows or should reasonably have known that it was
infringing:
– According to art.68(1) UPCA, if the infringer knew or had reasonable grounds to know that its
activity infringed a patent, the Court has to award damages appropriate to the harm actually
suffered as a result of the infringement; or
– According to art.68(4) UPCA, where the infringer did not know that it was infringing a patent
or had no reasonable grounds for so knowing, the Court has a discretion to order the
recovery of profits or the payment of compensation. On the other hand, the Court is not
required to do so and will therefore need to be persuaded by the patentee that such
compensation is appropriate in all the circumstances.
15-55 The difference between these two options is essentially to allow the Court to be fair as between
the parties in circumstances when the infringer did not know and had no reason to know it was
infringing. In such circumstances, the Court will need to consider the positions of the two
parties and come to a conclusion based on the evidence before it as to whether to make any
award of damages/profits at all and, if so, whether or not to award all potential compensation
or simply a proportion.
15-56 Whether or not the discretion in art.68(4) UPCA is exercised by the Court will be affected by
the nature of the infringer. Art.4(4) Translation Regulation indicates that:
“the court hearing the dispute shall assess and take into consideration, in particular where the
alleged infringer is a SME, a natural person or a non-profit organisation, a university or a public
research organisation, whether the alleged infringer acted without knowing or without
reasonable grounds for knowing, that he was infringing the European patent with unitary
effect before having been provided with the translation referred to in paragraph 1.” 74
73
74
Anan Kasei Co. Ltd & Anr v Neo Chemicals & Oxides (Europe) Ltd & Ors [2023] EWCA Civ 11.
art.4(1) Translation Regulation states that, in the event of a dispute, the patent proprietor shall provide, at the request and
choice of the alleged infringer, a full translation of the Unitary patent into an official language of the Member State in which
the infringement took place or the Member State where the alleged infringer is domiciled.
© Bird & Bird LLP | May 2023
A Guide to the UPC and the UP 282
