Wednesday, June 27, 2018

U.K. Update: Marshall on Accounts of Profits, Radcliffe on Awards of Costs

1.  Joshua Marshall has published an article titled Account of Profit for Infringement of Intellectual Property Rights, 40 EIPR 260 (2018).  Here is the abstract:
This article discusses the remedy of an account of profit awarded at the election of a claimant who successfully pleads infringement of their intellectual property rights. This article will sketch out the essential remedies available where intellectual property rights have been infringed and the fundamental differences between them. This article will then turn to consider the causes of action for which an account of profit is available and the relevant obligations and rights at play. This article then attempts to rationalise the remedy where intellectual property rights have been infringed. It is submitted that, in this context, the remedy is a personal, rather than proprietary, right to disgorge the profit made by the tortfeasor in committing the wrong. 
Mr. Marshall also has published a comment titled OOO Abbott v Design & Display Ltd:  Account of Profits for Patent Infringement, 40 EIPR 329-33.  Here is the abstract: 
In proceedings for patent infringement, once liability has been established a successful claimant will often be permitted to elect between compensatory damages or an account of the profits made by the defendant. The defendant need only account for net profits, not gross turnover, meaning that overheads should be deducted. This raises the question of what overheads can be  deducted and in what proportion. The court has grappled with these issues throughout these proceedings. After four years of litigation over the correct quantum of the remedy, the value of the defendant’s profit has been determined to be nil.
For previous discussion on this blog of earlier proceedings in this matter, see herehere, and here.

2.  Jonathan Radcliffe has published an article titled Unregistered Patent Transaction?  Even in Win, That'll Cost You in Bloomberg BNA's World Intellectual Property Report.  As in the U.S., a party to an assignment of patent rights may, but not is required, to record the assignment with the Patent Office.  There are some obvious third-party benefits, however, from knowing whether a patent initially granted to one person has been transferred to another; and so English law attempts to encourage the recordal of such a transfer by providing, in section 68 of the Patent Act, that:
Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, before the transaction, instrument or event is registered, in proceedings for such an infringement, the court or comptroller shall not award him costs or expenses unless -
(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or
(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.
Mr. Radcliffe discusses a recent case, L'Oreal v. RN Ventures, [2018] EWHC 391, in which the Patents Court awarded L'Oreal S.A. (the exclusive licensor) and L'Oreal U.K. (the exclusive licensee) only partial costs (covering the post-registration period) for not having recorded the license until after the two had filed suit for infringement. As Mr. Radcliffe notes, "This section now has judicial teeth."

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