Johnson on Assessments of Patent Damages in the U.K.

Phillip Johnson has published an interesting article titled The assessment of damages in patent infringement:  General Tire and a history of uncertainty, 15 Queen Mary J. Intell. Prop. 440 (2025).  Here is the abstract:

A court undertaking an assessment of damages has been a rare thing across most of the history of patent law. The House of Lords decision in General Tire & Rubber Company and Firestone Tyre and Rubber Company [1976] RPC 197 looked like it would provide some certainty. But as an exploration of the archive materials surrounding the Patents Bill shows, contemporaries took an entirely different view of the decision. A historical analysis shows not only the importance of the case but also the confusion it caused and how the proposed remedy of a statutory damages rule might have been worse than the cure.

The article traces the development of U.K. case law concerning patent damages beginning in the nineteenth century.  After enactment of the Patents, Designs and Trade Marks Act 1883, there was a flurry of case law on damages from 1885-1925, after which there were no reported decisions until General Tire in the mid-1970s.  Lord Wilberforce’s speech in that case embraced the framework proposed in Lord Justice Fletcher Moulton’s 1911 decision in Meters Ltd. v. Metropolitan Gas Meters Ltd., to the effect that judges should consider licenses already “granted and the rates of royalty fixed by them, to estimate their relevance and comparability, to apply them so far as he can to the bargain hypothetically to be made between the patentee and the infringer, and to the extent to which they do not provide a figure on which the damage can be measured, to consider any other evidence, according to its relevance and weight, upon which he can fix a rate of royalty which would have been agreed.”  Professor Johnson’s research shows that in the wake of this decision, there was serious discussion of enacting a bill that might have expressly codified a “willing licensor/willing licensee” approach to royalty awards, though ultimately no such bill was passed.  Although the Intellectual Property (Enforcement, etc.) Regulation 2006 reflects IPRED article 13 and does reference “the royalties or fees which would have been due had the defendant obtained a licence,” Professor Johnson states that it “did not change practice significantly.” He concludes that the proposed statutory provision in the 1970s might not have improved matters and that “General Tire remains a precious precedent.”

For what it’s worth, I provide some discussion of General Tire, Meters, and some of the other relevant British cases in chapter 3 of Comparative Patent Remedies and in chapter 4 of my new book, Remedies in Intellectual Property Law.  I will be sure to note the above article in any subsequent editions!

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I've been very busy lately, and will be taking a blogging break next week.  I plan to return the week of February 9.