Readers may recall that, over a period of time from 2023 to early 2024, Professor Siebrasse published a ten-part series of posts on his Sufficient Description blog on the Canadian Supreme Court’s decision in Nova v. Dow, which addresses the use of the noninfringing alternatives concept in calculating an infringer’s profits. (For links to the ten, see here.) Professor Siebrasse also published a two-part article on the case, Nova v. Dow: Intuition or Principle in the Accounting of Profits Remedy, Part I, 35 IPJ 249 (2023) and Nova v. Dow: Intuition or Principle in the Accounting of Profits Remedy, Part II, 36 IPJ 81 (2023). The articles are available on Westlaw. Here is the common abstract:
An accounting of profits is an equitable remedy which, in patent law, requires the infringer to disgorge profits made through its use of the patented invention. It is broadly similar to gain-based remedies which are available in other areas of law, most prominently for equitable wrongs and unjust enrichment. An accounting is often sought by a successful patentee and is routinely granted when sought. In Nova v. Dow, the Supreme Court addressed the method of calculating an accounting of profits in the patent context. This article argues that at the doctrinal level, the approach set out by the Court fails to set out any coherent principle or test, and it will take decades for the uncertainty to be resolved. Nova v. Dow is equally problematic at a policy level, as it will result in excessive disgorgement that will have a chilling effect on investment in innovative sectors of the economy. The article argues that the best response to Nova v. Dow is for the lower courts to resile from the current practice of routinely granting an accounting. The article argues that the best response to Nova v. Dow is to legislatively abolish the accounting remedy. Alternatively, the courts should only grant an accounting against an infringer that wilfully declined to license the patent at issue.
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