AIPPI Q236: Relief in Proceedings Other than Injunctions or Damages, Part 4: Some Final Thoughts

I've already blogged three times on AIPPI's Q236 on Relief in Proceedings Other than Injunctions or Damages (here, here, and here).  This post will finish things up with a few concluding observations about the responses to Q236, particularly as those responses relate to patent cases.  (The reports also discuss remedies for the infringement of other IP rights, of course.)  As noted previously, all of the relevant AIPPI documents are accessible from AIPPI's website, here.

First, on the topic of accountings of defendant's profits, as I've noted before the Working Guidelines state "Some jurisdictions treat profits made from infringing use of an IPR as a method of calculating compensatory damages. Other jurisdictions recognise a difference between damages and an account of profits. . . .  The Groups are invited to identify whether account of profits (or any monetary remedy) is available as a separate and/or alternative remedy to damages in their country."  The Summary Report further clarifies (p.3 n.10) that

This form of Additional Relief refers to the preparedness of the court to order that the infringer disgorge their wrongfully made profits to the IPR holder. It does not encompass the concept of lost profits the IPR holder may suffer by reason of the infringer's wrongful acts, eg the concept of lost profits under US law. As anticipated, a number of Groups reported that profits made from infringing use of an IPR are simply a measure of damages or method of calculating damages. Where that was apparent in the responses, those results are not included here.

So limited, the Summary Report indicates that only 18 of 40 member groups report the existence of accountings of profits as a separate remedy.  Some of the member groups reports do appear a bit confused on the point.  The U.S. report, for example, is one of the ones that sometimes appears to conflate an accounting of defendant's profits with an award of lost profits (see U.S. Report p.3).  (The latter, but not the former, is available in the U.S. for the infringement of a utility patent.  Awards of defendant's profits are available only for design patent infringement, a point which the U.S. report does mention later on, at p.11.)  Similarly, even though German courts sometimes award the IP holder the defendant's profits, the German report discusses this in relation to section 140d of the Patent Act, which relates to the production of documents.  (Perhaps because of the lingering view among some German jurists that awards of defendant's profits are a proxy for the plaintiff's actual loss?  For discussion of this issue on this blog, see here and here.)  The French report, in my opinion, reflects a better understanding of the question AIPPI was posing, stating that under article L.615-7 of the French I.P. Code, "the profits are taken into account in the fixing of the damages with the loss of earnings of the injured party and its moral damage," but that in the authors' view "this does not constitute additional relief.  The provision is not very clear: it seems to allow the judge to go beyond the principle of 'full compensation', but without necessarily going as far as account of profits."  Note also that, according to the summary report (p.10), in the U.K. and Australia an accounting of profits "may not be ordered against an innocent infringer in relation to patent or design infringement."  (I actually don't see the Australia report on the AIPPI's website.)

Second, the member group reports disclose quite a lot of variation with respect to the conditions under which declaratory judgments are available.  See, e.g., Summary Report p. 4 (stating that "in the Czech Republic and France, declaratory relief is available only in respect of patent infringement"); id. pp. 9-10 (noting variation with respect to standing requirements).  

Third, the discussion of the remedies of recall, removal from the channels of commerce, and destruction at pages 3-4 of the German report was quite illuminating. I won't attempt to summarize it here other than to note that the German courts are not yet of one mind on such issues as whether the patentee must precisely describe the activity it wants the infringer to undertake, and whether recall and removal are preparatory to or independent of a claim for destruction.

To sum up, the AIPPI materials can be a useful source for finding the law on certain types of remedies in a large number of countries.  Some of the country materials are more detailed than others, but I will probably refer back to some of these from time to time, at least a starting point for further research.